MPEP § 901.03 — Pending Applications (Annotated Rules)
§901.03 Pending Applications
This page consolidates and annotates all enforceable requirements under MPEP § 901.03, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Pending Applications
This section addresses Pending Applications. Primary authority: 35 U.S.C. 122, 35 U.S.C. 122(b), and 37 CFR 1.11(b). Contains: 2 requirements, 1 prohibition, 2 permissions, and 2 other statements.
Key Rules
Publication Timing (18 Months)
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request for voluntary publication shall be published except for the following enumerated exceptions.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request for voluntary publication shall be published except for the following enumerated exceptions.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request for voluntary publication shall be published except for the following enumerated exceptions.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request for voluntary publication shall be published except for the following enumerated exceptions.
Access to National Stage Applications
U.S. patent application publications are prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of the publication date. Under pre-AIA 35 U.S.C. 102(e)(1) and 35 U.S.C. 102(a)(2), a U.S. patent application publication under 35 U.S.C. 122(b) is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under pre-AIA 35 U.S.C. 102(e) as of the international filing date, or an earlier effective U.S. filing date, only if the international application was filed on or after November 29, 2000, designated the United States, and was published under PCT Article 21(2) in English. Similarly, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under 35 U.S.C. 102(a)(2) as of the international filing date, or an earlier effective U.S. filing date.
U.S. patent application publications are prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of the publication date. Under pre-AIA 35 U.S.C. 102(e)(1) and 35 U.S.C. 102(a)(2), a U.S. patent application publication under 35 U.S.C. 122(b) is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under pre-AIA 35 U.S.C. 102(e) as of the international filing date, or an earlier effective U.S. filing date, only if the international application was filed on or after November 29, 2000, designated the United States, and was published under PCT Article 21(2) in English. Similarly, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under 35 U.S.C. 102(a)(2) as of the international filing date, or an earlier effective U.S. filing date.
Restrictions on Access to Application Files
Except as provided in 37 CFR 1.11(b), 37 CFR 1.14(a)(1)(v) and 37 CFR 1.14(a)(1)(vi), pending U.S. applications which have not been published are generally preserved in confidence (37 CFR 1.14(a)) and are not available as references. However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity. See MPEP § 804. For applications having a common assignee or applicant and different inventive entities claiming a single inventive concept, see MPEP § 804.03. See also MPEP § 2127, subsection IV.
Control of Inspection by Assignee (MPEP 106)
Except as provided in 37 CFR 1.11(b), 37 CFR 1.14(a)(1)(v) and 37 CFR 1.14(a)(1)(vi), pending U.S. applications which have not been published are generally preserved in confidence (37 CFR 1.14(a)) and are not available as references. However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity. See MPEP § 804. For applications having a common assignee or applicant and different inventive entities claiming a single inventive concept, see MPEP § 804.03. See also MPEP § 2127, subsection IV.
International Design Application Requirements
First, an application shall not be published if it is:
- (A) no longer pending;
- (B) subject to a secrecy order under 35 U.S.C. 181, that is, publication or disclosure of the application would be detrimental to national security;
- (C) a provisional application filed under 35 U.S.C. 111(b);
- (D) an application for a design patent filed under 35 U.S.C. 171;
- (E) an application for an International design application filed under 35 U.S.C. 382; or
- (F) a reissue application filed under 35 U.S.C. 251.
Reissue Application Filing
First, an application shall not be published if it is:
…
(F) a reissue application filed under 35 U.S.C. 251.
AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154)
U.S. patent application publications are prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of the publication date. Under pre-AIA 35 U.S.C. 102(e)(1) and 35 U.S.C. 102(a)(2), a U.S. patent application publication under 35 U.S.C. 122(b) is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under pre-AIA 35 U.S.C. 102(e) as of the international filing date, or an earlier effective U.S. filing date, only if the international application was filed on or after November 29, 2000, designated the United States, and was published under PCT Article 21(2) in English. Similarly, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under 35 U.S.C. 102(a)(2) as of the international filing date, or an earlier effective U.S. filing date.
Citations
| Primary topic | Citation |
|---|---|
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) Access to National Stage Applications | 35 U.S.C. § 102(a) |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) Access to National Stage Applications | 35 U.S.C. § 102(a)(1) |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) Access to National Stage Applications | 35 U.S.C. § 102(a)(2) |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) Access to National Stage Applications | 35 U.S.C. § 102(e) |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) Access to National Stage Applications | 35 U.S.C. § 102(e)(1) |
| International Design Application Requirements | 35 U.S.C. § 111(b) |
| Publication Timing (18 Months) | 35 U.S.C. § 122 |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) Access to National Stage Applications Publication Timing (18 Months) | 35 U.S.C. § 122(b) |
| International Design Application Requirements | 35 U.S.C. § 171 |
| International Design Application Requirements | 35 U.S.C. § 181 |
| International Design Application Requirements Reissue Application Filing | 35 U.S.C. § 251 |
| International Design Application Requirements | 35 U.S.C. § 382 |
| Control of Inspection by Assignee (MPEP 106) Restrictions on Access to Application Files | 37 CFR § 1.11(b) |
| Control of Inspection by Assignee (MPEP 106) Restrictions on Access to Application Files | 37 CFR § 1.14(a) |
| Control of Inspection by Assignee (MPEP 106) Restrictions on Access to Application Files | 37 CFR § 1.14(a)(1)(v) |
| Control of Inspection by Assignee (MPEP 106) Restrictions on Access to Application Files | 37 CFR § 1.14(a)(1)(vi) |
| Publication Timing (18 Months) | 37 CFR § 1.215 |
| Publication Timing (18 Months) | 37 CFR § 1.221 |
| – | MPEP § 1122 |
| Control of Inspection by Assignee (MPEP 106) Restrictions on Access to Application Files | MPEP § 2127 |
| Control of Inspection by Assignee (MPEP 106) Restrictions on Access to Application Files | MPEP § 804 |
| Control of Inspection by Assignee (MPEP 106) Restrictions on Access to Application Files | MPEP § 804.03 |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) Access to National Stage Applications | PCT Article 21(2) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 901.03 — Pending Applications
Source: USPTO901.03 Pending Applications [R-07.2015]
Except as provided in 37 CFR 1.11(b), 37 CFR 1.14(a)(1)(v) and 37 CFR 1.14(a)(1)(vi), pending U.S. applications which have not been published are generally preserved in confidence (37 CFR 1.14(a)) and are not available as references. However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity. See MPEP § 804. For applications having a common assignee or applicant and different inventive entities claiming a single inventive concept, see MPEP § 804.03. See also MPEP § 2127, subsection IV.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request for voluntary publication shall be published except for the following enumerated exceptions.
First, an application shall not be published if it is:
- (A) no longer pending;
- (B) subject to a secrecy order under 35 U.S.C. 181, that is, publication or disclosure of the application would be detrimental to national security;
- (C) a provisional application filed under 35 U.S.C. 111(b);
- (D) an application for a design patent filed under 35 U.S.C. 171;
- (E) an application for an International design application filed under 35 U.S.C. 382; or
- (F) a reissue application filed under 35 U.S.C. 251.
Second, an application shall not be published if an applicant submits at the time of filing of the application a request for nonpublication. See MPEP § 1122.
U.S. patent application publications are prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) and 35 U.S.C. 102(a)(1) as of the publication date. Under pre-AIA 35 U.S.C. 102(e)(1) and 35 U.S.C. 102(a)(2), a U.S. patent application publication under 35 U.S.C. 122(b) is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under pre-AIA 35 U.S.C. 102(e) as of the international filing date, or an earlier effective U.S. filing date, only if the international application was filed on or after November 29, 2000, designated the United States, and was published under PCT Article 21(2) in English. Similarly, a U.S. patent application publication of a National Stage application and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under 35 U.S.C. 102(a)(2) as of the international filing date, or an earlier effective U.S. filing date.