What is the consequence of filing an inappropriate nonpublication request?
Filing an inappropriate nonpublication request can have serious consequences. According to MPEP 1122:
“If applicants filed a nonpublication request in a U.S. application that claims the benefit to an earlier foreign or international application, the Office will not accept the nonpublication request and will assign a projected publication date. The applicant will be notified that the certification is inconsistent with the priority claim.“
In such cases, the USPTO will provide a non-extendable time period of 30 days for the applicant to explain how the certification is valid despite the priority claim. If a satisfactory explanation is not provided, the U.S. application will be published.
It’s important to note that there is no provision for “correction” of an improper certification under 35 U.S.C. 122(b)(2)(B)(i)-(iv). Making a false statement (e.g., an improper certification) may violate 37 CFR 11.18(b) and could lead to disciplinary action for registered patent practitioners.
If you realize you’ve made an improper certification, you should promptly file a rescission of the nonpublication request and acknowledge that the original certification was improper.
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