Patent Law FAQ

The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:

• Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
• Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
• Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.

Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.

For more information on new assignment, visit: new assignment.

For more information on USPTO requirements, visit: USPTO requirements.

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on patent assignment, visit: patent assignment.

For more information on substitute application, visit: substitute application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:

• Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
• Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
• Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.

Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.

For more information on new assignment, visit: new assignment.

For more information on USPTO requirements, visit: USPTO requirements.

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on patent assignment, visit: patent assignment.

For more information on substitute application, visit: substitute application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

Patent applications are generally published 18 months after the earliest filing date, with some exceptions. According to 35 U.S.C. 122(b)(1)(A):

“Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.”

Exceptions to publication include applications that are no longer pending, subject to a secrecy order, provisional applications, or design patent applications.

Patent applications are generally published by the USPTO 18 months after the earliest filing date for which a benefit is sought. This is specified in 35 U.S.C. 122(b)(1)(A):

Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.

There are some exceptions to this rule, such as applications that are no longer pending or are subject to a secrecy order. Applicants can also request early publication or non-publication under certain conditions.

The Manual of Patent Examining Procedure (MPEP) serves as a comprehensive guide for patent examiners, applicants, attorneys, and agents involved in the patent application process. According to MPEP 101, its purpose is to:

• Provide instructions to examiners for the examination of patent applications
• Outline procedures for processing and examining patent applications
• Serve as a reference work on patent laws, rules, and examination practices

The MPEP states: The Manual contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application.

For more information on patent examination, visit: patent examination.

For more information on USPTO Guidelines, visit: USPTO Guidelines.

The Manual of Patent Examining Procedure (MPEP) holds a unique legal status in patent law. According to MPEP 101:

The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.

This means:

• The MPEP is not legally binding like statutes or regulations
• It serves as an interpretive guide for patent examiners and practitioners
• Courts may give it deference but are not bound by its contents

However, the MPEP is highly influential because it:

• Reflects official USPTO policies and procedures
• Is used by examiners in their day-to-day work
• Provides valuable guidance for patent applicants and attorneys

While not law, the MPEP is an essential resource for understanding and navigating the patent examination process.

For more information on patent law, visit: patent law.

For more information on USPTO Guidelines, visit: USPTO Guidelines.

Patent applications are generally kept confidential by the USPTO until they are published or granted. As stated in 35 U.S.C. 122(a):

“Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.”

This confidentiality requirement applies to all USPTO employees handling patent applications.

The USPTO has strict rules about what information can be disclosed regarding unpublished patent applications. According to 37 CFR 1.14(a)(2), only limited status information may be communicated to the public if the application is identified in a published patent document or in another application. This status information includes:

• Whether the application is pending, abandoned, or patented
• Whether the application has been published under 35 U.S.C. 122(b)
• The application’s numerical identifier (application number or serial number plus filing date)
• Whether another application claims benefit of the application, and if so, the numerical identifier, relationship, status, and publication status of that application

No other information about unpublished applications can be disclosed without proper authorization.

The USPTO can disclose limited information about patent applications to the public, as outlined in 37 CFR 1.14(a)(2):

• Whether the application is pending, abandoned, or patented
• Whether the application has been published
• The application’s numerical identifier
• Whether another application claims benefit of the application

This information can only be disclosed if the application is identified in a published patent document or in another application as specified in 37 CFR 1.14(a)(1)(i) through (a)(1)(vi).

MPEP 101 specifies the following procedure that should be followed before giving any information about an unpublished pending or abandoned patent application over the telephone:

1. Obtain the caller’s full name, the application number, and the caller’s telephone number. Ask if there is an attorney or agent of record.
2. Verify the identity of the caller and their authority to receive information.
3. For a practitioner of record, check their registration number in Patent Data Portal. Only call back a practitioner at the number listed in Patent Data Portal.
4. For an inventor, applicant, or assignee, check the correspondence address in Patent Data Portal and call back at the number provided if it matches.
5. If identity and authority cannot be verified, inform the caller that no information can be provided.

35 U.S.C. 122 and 18 U.S.C. 2071 impose statutory requirements which cover the handling of patent applications and related documents. As explained in MPEP 101:

“35 U.S.C. 122 and 18 U.S.C. 2071 impose statutory requirements which cover the handling of patent applications and related documents. Suspension, removal, and even criminal penalties may be imposed for violations of these statutes.”

Therefore, USPTO employees must take proper care to maintain the confidentiality of applications and related papers.

Unauthorized disclosure of patent application information can result in severe penalties for USPTO employees. According to the MPEP:

“Suspension, removal, and even criminal penalties may be imposed for violations of these statutes.”

The relevant statutes include 35 U.S.C. 122 and 18 U.S.C. 2071. Additionally, 18 U.S.C. 2071 states that individuals who willfully and unlawfully conceal, remove, mutilate, or destroy official documents may be:

• Fined under this title
• Imprisoned for up to three years
• Disqualified from holding any office under the United States

These penalties underscore the critical importance of maintaining confidentiality in patent application handling.

There are several exceptions to the 18-month publication rule for patent applications, as outlined in 35 U.S.C. 122(b)(2)(A). An application shall not be published if it is:

• No longer pending
• Subject to a secrecy order under section 181
• A provisional application filed under section 111(b)
• An application for a design patent filed under chapter 16

Additionally, an applicant can request non-publication if they certify that the invention has not and will not be the subject of an application filed in another country that requires publication after 18 months. However, if the applicant later files such a foreign application, they must notify the USPTO within 45 days or the U.S. application will be considered abandoned.

MPEP 101 explains that USPTO employees must take specific measures to ensure the confidentiality of patent applications:

• No part of any application or related paper should be reproduced or copied except for official purposes.
• Application files must not be displayed or handled in a manner that would allow unauthorized persons to inspect them.
• For non-electronic files removed from their storage area, a charge must be promptly made in the tracking system.
• Physical files must be stored properly, not in unsecured locations like desk drawers.
• Interoffice mail related to applications must be sent in appropriate envelopes.

The Manual of Patent Examining Procedure (MPEP) is regularly updated to reflect changes in patent laws, rules, and procedures. According to MPEP 101:

The Manual is updated periodically to include changes in patent laws and rules and also changes in Patent and Trademark Office procedures.

While the MPEP doesn’t specify an exact frequency for updates, they typically occur:

• Multiple times per year to incorporate new policies and procedures
• After significant changes in patent laws or regulations
• When court decisions impact patent examination practices

Users should always refer to the most recent version of the MPEP available on the USPTO website for the most up-to-date information.

For more information on MPEP updates, visit: MPEP updates.

For more information on patent law changes, visit: patent law changes.

For more information on USPTO procedures, visit: USPTO procedures.

The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:

1. Obtain the caller’s full name, application number, and telephone number
2. Verify the caller’s identity and authority to receive information
3. Check Patent Data Portal or the application file to verify releasable information
4. Return the call using a verified telephone number

Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.

USPTO employees are legally obligated to maintain the confidentiality of pending patent applications. According to MPEP 101:

All U.S. Patent and Trademark Office employees are legally obligated to preserve pending applications for patents in confidence until they are published or patented in accordance with 35 U.S.C. 122 and 37 CFR 1.14.

This includes several practices:

• Not reproducing or copying application documents except for official purposes
• Properly handling and storing application files
• Using appropriate envelopes for interoffice mail
• Being careful during interviews to prevent exposure of other applicants’ files

Violations of these confidentiality requirements can result in suspension, removal, and even criminal penalties.

For more information on USPTO employees, visit: USPTO employees.

USPTO employees are legally obligated to maintain the confidentiality of pending patent applications. The MPEP states:

“All U.S. Patent and Trademark Office employees are legally obligated to preserve pending applications for patents in confidence until they are published or patented in accordance with 35 U.S.C. 122 and 37 CFR 1.14.”

Employees must follow strict procedures to ensure confidentiality, including:

• Not reproducing or copying application documents except for official purposes
• Properly handling and storing application files
• Using appropriate envelopes for interoffice mail
• Being cautious during interviews to prevent exposure of other applications

Violations of these procedures can result in suspension, removal, or even criminal penalties.

Requesting information about an unpublished patent application requires specific procedures to ensure confidentiality. According to the MPEP:

• Requests can be made by phone or in person
• The requester’s identity and right to information must be verified
• Only certain individuals (applicant, inventor, assignee of record, or attorney/agent of record) may receive detailed information
• USPTO employees must follow a strict verification process before releasing any information

The MPEP states:

“Except as provided in 35 U.S.C. 122(b), no information concerning pending or abandoned patent applications (except applications which have been published, reissue applications and reexamination proceedings) may be given to the public without appropriate written authorization.”

This ensures that confidential application information is only released to authorized individuals.

For more information on information requests, visit: information requests.

For more information on unpublished applications, visit: unpublished applications.

Access to information about unpublished patent applications is generally restricted. However, according to MPEP 101, there are specific circumstances under which such information may be accessed:

1. If you are the applicant, an inventor, the assignee of record, or the attorney or agent of record, you may be able to access information about the application.
2. If the application is identified in a published patent document or in another application as specified in 37 CFR 1.14(a)(1)(i) through (a)(1)(vi), certain status information may be available to the public.
3. In some cases, a petition for access or a power to inspect may be required to access information about an unpublished application.

It’s important to note that the USPTO has strict procedures for verifying the identity and authority of individuals requesting information about unpublished applications to maintain confidentiality.

For more information on unpublished applications, visit: unpublished applications.

For more information on USPTO procedures, visit: USPTO procedures.

According to MPEP 101, particular care must be taken when a caller requests the publication date or issue date assigned to a pending patent application:

“If the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, an inventor, the assignee of record, or the attorney or agent of record.”

The identity and authority of the caller must be verified according to the procedures outlined in the MPEP before this information can be provided over the telephone.

For unpublished patent applications that are pending or abandoned, the following individuals are authorized to receive status information:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor
5. A registered attorney or agent named in the application papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495, if a power of attorney has not been appointed under 37 CFR 1.32

Additionally, anyone with written authority granting access from one of the above individuals is also entitled to status information.

A patent application file becomes available to the public in the following situations:

1. When the application has issued as a patent or published as a statutory invention registration
2. When the application has been published and subsequently abandoned
3. When the application has been published and is still pending
4. When an unpublished, abandoned application is identified or relied upon in certain public documents
5. When the benefit of an unpublished pending application is claimed in certain public documents

These conditions are outlined in 37 CFR 1.14(a)(1). In most cases, a fee is required to access the application file contents.

Patent application records may be available to the public in the following situations:

1. Patented applications and statutory invention registrations
2. Published abandoned applications
3. Published pending applications
4. Unpublished abandoned applications that are identified or relied upon
5. Unpublished pending applications whose benefit is claimed
6. Unpublished pending applications that are incorporated by reference or otherwise identified

For specific details on each situation, refer to 37 CFR 1.14(a)(1)(i)-(vi).

For international applications and applications claiming the benefit of a published international application:

1. If the United States is indicated as a Designated State, status information is available for the national stage application and any application claiming benefit of the filing date of the published international application.
2. Only the serial number, filing date, application number, and whether the application is pending, abandoned, or patented may be provided.
3. A copy of the first page of the published international application or the corresponding page of the PCT Gazette must be supplied with the status request.

Status requests should be made in writing to the International Patent Legal Administration or directed to the PCT Help desk.

According to MPEP 102, accessing unpublished patent applications requires specific procedures:

“Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, are not available to the public.”

In such cases, a granted petition for access or a power to inspect is necessary to obtain the application or a copy of the application. The specific requirements for these procedures are outlined in 37 CFR 1.14(i) and (c) respectively.

For more information on petition for access, visit: petition for access.

For more information on unpublished applications, visit: unpublished applications.

Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information about the filing, pendency, or subject matter of an application, including status information and access to the application, is only given to the public as set forth in § 1.11 or in this section of the MPEP.

As stated in 37 CFR 1.14(a): Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.

Status information of an application includes:

• Whether the application is pending, abandoned, or patented
• Whether the application has been published
• The application number or the serial number plus any one of the filing date of the national application, the international filing date, or the date of entry into the national stage
• Whether another application claims the benefit of the application, and if so, status information for those applications

This is defined in 37 CFR 1.14(a)(2) and further elaborated in MPEP 102.

For provisional applications, the USPTO can provide the following information:

• Application number
• Filing date
• Whether the application is pending or abandoned
• Expiration date

It’s important to note that provisional applications are not published, so no additional information beyond these basic details is available to the public.

For pending or abandoned applications that have not been published, the Office may only confirm that an application has been filed, provide the application number and filing date, the inventorship information, the classification, and the group art unit assigned to the application. This limited information is available to the public to help avoid infringement of pending patent rights.

According to MPEP 102, for national stage applications or applications claiming the benefit of a published international application:

“Only the serial number and filing date, or application number, as well as whether the application is pending, abandoned, or patented may be given for the national stage application and for any applications claiming the benefit of the filing date of the referenced published international application. Other information contained on the continuity data screen, such as whether the application is a CIP, continuation or divisional application, the date of abandonment of the application and issue date may be confidential information and should not be communicated.”

To request this information, a copy of the first page of the published international application or the corresponding page of the PCT Gazette must be supplied with the status request to the International Patent Legal Administration.

For more information on international applications, visit: international applications.

For more information on status information, visit: status information.

Under MPEP 102, limited information about a pending application can be obtained, including:

• Application number
• Filing date
• Whether the application has been published
• Whether the application has been assigned
• Power of attorney
• Name of the examiner to whom the application is assigned
• Status of the application (e.g., pending, abandoned, or issued)
• Group art unit number
• Filing receipt information
• If available, projected publication date

However, access to the application file itself is restricted unless special circumstances apply or the application has been published.

USPTO personnel should use Patent Data Portal to determine the current location or status of an application. For Image File Wrapper (IFW) applications, no location is associated with the file.

As stated in MPEP 102: When it is desired to determine the current location or status of an application, Office personnel should use Patent Data Portal. If the application is an Image File Wrapper (IFW) application, no location is associated with the file.

To obtain status information for a patent application, you can:

1. Check Patent Center or Private Patent Application Information Retrieval (PAIR) on the USPTO website at www.uspto.gov
2. Contact the Application Assistance Unit (AAU) for applications in pre-examination or post-examination processing via email at HelpAAU@uspto.gov, phone at 571-272-4000 or toll-free at 888-786-0101, or visit their website

If the application has not been published but is pending or abandoned, the AAU will determine if the requester is authorized to receive status information based on their relationship to the application.

According to MPEP 102, when it is desired to determine the current location or status of an application, USPTO personnel should use Patent Data Portal. However, it’s important to note that:

“If the application is an Image File Wrapper (IFW) application, no location is associated with the file.”

For public inquiries about application status, the recommended methods are:

• Checking Patent Center or Private PAIR on the USPTO website
• Contacting the Application Assistance Unit (AAU) for pre-examination or post-examination processing applications
• Calling the Technology Center (TC) to which the application is assigned for information about replies or expected Office actions

The assignment of an application to a TC can be determined from Patent Data Portal.

For more information on USPTO Resources, visit: USPTO Resources.

In general, status information cannot be provided for unpublished patent applications, unless the requester is:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor
5. A registered attorney or agent named in the application papers

Alternatively, a person with written authority from any of the above parties can be provided status information.

There are some exceptions where status information can be supplied for unpublished applications, such as:

• When the application is identified in a published patent document or another application publication
• When the application is a national stage application or claims benefit to a published international application and the US is a designated state
• When the application is an international design application maintained by the USPTO for national processing

According to 37 CFR 1.11(a), the following patent application files are open to public inspection:

• Published applications
• Patents
• Statutory invention registrations

The public can obtain copies of these files upon payment of the fee set forth in 37 CFR 1.19(b)(2). However, if an application was published in redacted form, the complete file may not be available if certain requirements are met and the application is still pending.

The Image File Wrapper (IFW) system is an electronic system used by the USPTO to store and process patent application files. Key points about the IFW system and its impact on public access include:

• Paper components of application files are scanned to create electronic image files
• For IFW applications, the electronic file is the Official file
• No access is granted to original paper documents used to create the IFW file
• Processing and examination are conducted using electronic images
• IFW files for patented applications, published applications, or applications referenced in published documents are accessible through Patent Center on the USPTO website
• All patent applications filed after June 30, 2003, have been scanned into the IFW system

The IFW system has made it easier for the public to access eligible patent application files online through Patent Center, eliminating the need to physically inspect paper files in many cases.

A ‘file wrapper’ refers to the official record of proceedings in the United States Patent and Trademark Office (USPTO) for a particular patent application or granted patent. It contains all the documents and correspondence related to the prosecution of the application or maintenance of the patent. This includes the original application, Office actions, applicant responses, amendments, and other relevant documents. The file wrapper provides a complete history of the examination process and is important for understanding the scope and validity of a patent.

Information about reexamination proceedings is made available to the public in several ways:

1. Announcement in the Official Gazette:
   • The filing of each request for reexamination (where the full fee has been paid) is announced
   • Reexaminations ordered at the Director’s initiative are also announced
2. Public inspection of reexamination files:
   • Once scanned into the Image File Wrapper (IFW) system, reexamination files are open to public inspection
   • Files can be accessed through Patent Center on the USPTO website
   • The entire contents of the reexamination file are viewable, except for non-patent literature

Direct quote: ‘All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette.’ (37 CFR 1.11(c))

Note that a reexamination file is typically not open to inspection until it has been scanned into the IFW system.

Certain information about patent applications is publicly available, even if the full application is not. According to 37 CFR 1.14(a)(1)(ii) and (iii), for published applications, the following information may be communicated without a petition for access:

• Whether the application is pending, abandoned, or patented
• Whether the application has been published under 35 U.S.C. 122(b)
• The application “numerical identifier” (application number or serial number plus filing date)
• Whether another application claims the benefit of the application

For published applications, “A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in §1.19(b).”

However, for unpublished applications, this information is generally not available to the public unless the application is identified or relied upon in a patent document or other published application.

For more information on patent applications, visit: patent applications.

For more information on public information, visit: public information.

Reissue application files have specific access rules as outlined in MPEP 103:

‘All reissue applications, both pending and abandoned, are open to public inspection and copying.’

This means that:

• Anyone can access reissue application files
• No special permission is required
• Both pending and abandoned reissue applications are available

However, if the reissue application contains a request for continued examination (RCE) filed on or after March 16, 2013, access to the file may be restricted until publication.

For more information on public inspection, visit: public inspection.

For more information on reissue applications, visit: reissue applications.

While most patent application files are available for public inspection, there are several exceptions:

• Pending or abandoned applications that have not been published under 35 U.S.C. 122(b)
• Applications subject to a secrecy order
• Provisional applications
• Applications that have been terminated or denied and are no longer open to public inspection
• Interference files, until judgment is entered (subject to certain exceptions)
• Applications for extension of patent term and any related submissions
• Certain trade secret, proprietary, and protective order materials

These exceptions are in place to protect confidential information and maintain the integrity of the patent application process.

While most patent application files are available for public inspection, there are some exceptions:

• Pending or abandoned applications that have not been published
• Applications subject to secrecy orders
• Certain international applications
• Applications for which the United States is not a designated country
• Information that would violate personal privacy or proprietary rights

These exceptions help protect sensitive information and maintain confidentiality in specific cases.

To request access to a patent application that is not publicly available, you generally need to file a petition for access. According to 37 CFR 1.14(a)(1)(vii), for applications that are not published, patented, or the subject of a benefit claim in a published application:

“A granted petition for access (see paragraph (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.”

To file a petition for access, you must:

• Submit the petition with the fee set forth in 37 CFR 1.17(g)
• Provide a showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access

The petition should be directed to the Office of Patent Legal Administration. The applicant will be given an opportunity to object to the granting of the petition, and the USPTO will make a determination based on the circumstances presented.

For more information on petition for access, visit: petition for access.

Any interested party may file a petition, accompanied by the petition fee, to the Director for access to an application. The petition may be filed either with proof of service of copy upon the applicant, or the petition may be filed in duplicate, in which case the duplicate copy will be sent by the Office to the applicant.

The petition should show not only why access is desired, but also why petitioner believes they are entitled to access. The applicant will normally be given a limited period such as 3 weeks within which to state any objection to the granting of the petition for access and reasons why it should be denied. If applicant states that they have no objection to the requested access, the petition will be granted. If objection is raised or applicant does not respond, the petition will be decided on the record.

To petition for access to a confidential patent application, you must file a petition under 37 CFR 1.14(i), which requires:

1. Payment of the petition fee set forth in 37 CFR 1.17(g)
2. A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access

The petition should be filed with the Office of Patent Legal Administration, unless the application is involved in an interference or trial before the Patent Trial and Appeal Board.

You may file the petition either with proof of service upon the applicant, or in duplicate so the USPTO can send a copy to the applicant. The applicant will typically have about 3 weeks to object to the granting of access.

Direct quote: ‘Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include: (1) The fee set forth in § 1.17(g); and (2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.’ (37 CFR 1.14(i))

To make a Freedom of Information Act (FOIA) request for USPTO records:

1. Submit a written request to the USPTO FOIA Officer:
   • Address: United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450
   • Mark the letter and envelope ‘Freedom of Information Act Request’
2. Describe the requested records in detail:
   • Include specific information such as dates, titles, names, subjects, etc.
   • Provide any known file designations or descriptions
3. If requesting records about yourself, follow additional requirements in 37 CFR 102.24
4. If requesting records about another individual, provide either:
   • A written authorization signed by that individual permitting disclosure
   • Proof that the individual is deceased (e.g., death certificate, obituary)

Direct quote: ‘A request for USPTO records that are not customarily made available to the public as part of USPTO’s regular informational services must be in writing, and shall be processed under FOIA, regardless of whether FOIA is mentioned in the request.’ (37 CFR 102.4(a))

Note: Many USPTO decisions are already available on the FOIA section of the USPTO website at www.uspto.gov/learning-and-resources/ip-policy/electronic-freedom-information-act-e-foia.

If a patent application has been published pursuant to 35 U.S.C. 122(b), then a copy of the specification, drawings, and all papers relating to the file of that published application (whether abandoned or pending) may be provided to any person upon written request and payment of the fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii) and (iii).

Published applications maintained in the Image File Wrapper (IFW) system are available on the USPTO website in Patent Center.

For patent application information not available through Public PAIR, you can submit a request to the USPTO under the Freedom of Information Act (FOIA). Here’s how to proceed:

1. Submit a written request to the USPTO’s FOIA Officer.
2. Clearly identify the records you’re seeking.
3. Explain why you believe the information should be disclosed if it’s not typically available to the public.
4. Be prepared to pay any applicable fees for search and duplication.
5. Wait for the USPTO to process your request and respond, which may take several weeks.

Note that certain information may still be withheld if it falls under FOIA exemptions or is protected by other statutes.

Access to unpublished patent application files is generally restricted. According to MPEP 103:

‘Unpublished abandoned applications are not open to public inspection.’

However, there are exceptions:

• If the application is referenced in a U.S. patent application publication or patent
• If written authority from the applicant, assignee, or attorney/agent of record is provided
• If a petition for access is granted

To request access, you may need to file a petition with the USPTO, demonstrating a need or right to access the application.

For more information on Patent application access, visit: Patent application access.

For more information on unpublished applications, visit: unpublished applications.

Access to unpublished abandoned patent applications is limited. According to 37 CFR 1.14(a)(1)(iv), the file contents of an unpublished abandoned application may be made available to the public if:

• The application is identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.
• Benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that has been published or patented.

To obtain access, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b).

Reissue application files are generally open to public inspection. According to 37 CFR 1.11(b):

• Reissue applications are open to inspection by the general public
• The filing of reissue applications (except for continued prosecution applications under 37 CFR 1.53(d)) is announced in the Official Gazette
• The announcement includes details such as filing date, reissue application and original patent numbers, title, inventor name, and examining group

For Image File Wrapper (IFW) reissue applications:

• Files are open to inspection by the general public through Patent Center via the USPTO website
• Members of the public can view the entire content of the reissue application file history online

Direct quote: ‘All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor.’ (37 CFR 1.11(b))

Access to international application files at the USPTO is governed by specific rules. According to MPEP 103:

‘International applications that designate the U.S. and have been published in accordance with PCT Article 21(2) are generally open to public inspection and copying.’

This means:

• Published international applications designating the U.S. are accessible
• Access is available after the application’s international publication
• Unpublished international applications are not open to public inspection

To access these files, you can use the USPTO’s Public PAIR system or visit the USPTO’s Public Search Facility.

For more information on international applications, visit: international applications.

For more information on public inspection, visit: public inspection.

Access to pending unpublished patent applications is generally restricted. However, according to 37 CFR 1.14(a)(1)(v) and (vi), there are some circumstances where a copy of the file contents or the application as originally filed may be provided:

• If the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has been published or patented.
• If the application is incorporated by reference or otherwise identified in a U.S. patent, statutory invention registration, U.S. patent application publication, international publication of an international application, or publication of an international registration designating the U.S.

In these cases, a written request must be submitted along with payment of the appropriate fee set forth in 37 CFR 1.19(b). The Office will not provide access to the paper file of a pending application, except under specific circumstances outlined in 37 CFR 1.14(c) or (i).

For applications filed on or after September 16, 2012, the following parties can provide written authority to grant access to inspect a pending or abandoned application kept in confidence under 35 U.S.C. 122(a), except as provided in 37 CFR 1.11, 1.14, 41.6, or 42.412:

1. The applicant
2. A patent practitioner of record
3. The assignee or an assignee of an undivided part interest
4. The inventor or a joint inventor

According to MPEP 104, access to inspect a patent application can be granted by specific individuals or entities. For applications filed on or after September 16, 2012, the following parties can provide written authority for access:

• The applicant
• A patent practitioner of record
• The assignee or an assignee of an undivided part interest
• The inventor or a joint inventor

The MPEP states: “The written authority must be signed by: (1) The applicant; (2) A patent practitioner of record; (3) The assignee or an assignee of an undivided part interest; (4) The inventor or a joint inventor; or (5) A registered attorney or agent named in the papers accompanying the application papers filed under §1.53 or the national stage documents filed under §1.495, if a power of attorney has not been appointed under § 1.32.”

For more information on application access, visit: application access.

For more information on power to inspect, visit: power to inspect.

For more information on written authority, visit: written authority.

The duration of a power to inspect granted by an applicant or inventor is generally ongoing until explicitly rescinded. According to MPEP 104:

“An unrestricted power to inspect given by an applicant or inventor is, under existing practice, recognized as in effect until and unless rescinded.”

This means that once granted, a power to inspect remains valid indefinitely unless the grantor takes action to revoke it. However, it’s important to note that this applies to unrestricted powers to inspect granted by applicants or inventors, and different rules may apply to other types of authorizations or parties.

For more information on Patent application access, visit: Patent application access.

Access to provisional patent applications is handled differently from non-provisional applications. According to MPEP 104:

“In provisional applications, access or certified copies may only be requested by parties with written authority from a named inventor, the applicant, the assignee of record, or the attorney or agent of record, unless the application is available pursuant to 37 CFR 1.14(a)(1)(iv)-(vi).”

The MPEP further explains:

“Since provisional applications do not require an oath or declaration, there may be no power of attorney in the application.”

This means that access to provisional applications is more restricted and typically requires specific written authority from key parties involved in the application. The absence of a required oath or declaration in provisional applications also affects how access is granted, as there may not be a formal power of attorney on file.

For more information on certified copies, visit: certified copies.

For more information on written authority, visit: written authority.

Access to patent applications for unregistered individuals is granted through a specific process outlined in MPEP 104:

“Unregistered employees of attorneys or agents, public stenographers, and all other persons not within the provisions of paragraphs (A) and (B) above will be given access only upon presentation of a written authorization for access (power to inspect) signed by a person specified in paragraph (A) above, which authorization will be entered as a part of the official file.”

This means that unregistered individuals must present a written authorization, often called a ‘power to inspect,’ signed by an authorized person such as the applicant, inventor, or attorney of record. The authorization must specifically name the person granted access and be limited to a single application. The USPTO provides Form PTO/SB/67 for this purpose.

For more information on Patent application access, visit: Patent application access.

For more information on power to inspect, visit: power to inspect.

For patent applications filed before September 16, 2012, the rules for granting power to inspect are slightly different. According to MPEP 104:

“For applications filed prior to September 16, 2012, if an executed oath or declaration pursuant to 37 CFR 1.63 or 1.497 has been filed, no person but the applicant (any one of joint applicants), an attorney or agent of record (if a power of attorney was filed), or an assignee whose assignment is of record will be permitted to have access to the file of any pending application kept in confidence under 35 U.S.C. 122(a), except as provided for under 37 CFR 1.11, 1.14, 41.6, or 42.412.”

This means that for older applications, access is more restricted once an oath or declaration has been filed, limiting it to the applicant, attorney or agent of record, or assignee of record, unless specific exceptions apply.

For more information on application access, visit: application access.

For more information on power to inspect, visit: power to inspect.

For more information on pre-AIA applications, visit: pre-AIA applications.

A person acting in a representative capacity under 37 CFR 1.34 may execute a power to inspect an application only if:

• The patent practitioner was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495, and
• A power of attorney has not been appointed under 37 CFR 1.32.

Once a power of attorney has been filed, any previously filed power to inspect signed by a patent practitioner who does not have a power of attorney will cease to have effect.

For Image File Wrapper (IFW) applications, the process of granting power to inspect is different. According to MPEP 104:

“Powers to inspect are not accepted in Image File Wrapper (IFW) applications. IFW applications are available through the Private Patent Application Information Retrieval (PAIR) system, and pro se applicants and attorneys of record have direct access to the IFW through Private PAIR (when a Customer Number is associated with the correspondence address for the application, and the applicant or attorney has access to Private PAIR for the customer number).”

This means that for IFW applications, access is typically granted through the Private PAIR system, eliminating the need for traditional powers to inspect. If access through Private PAIR is not possible, alternative methods for viewing the application may be necessary.

For more information on Patent application access, visit: Patent application access.

For more information on power to inspect, visit: power to inspect.

For more information on Private PAIR, visit: Private PAIR.

Yes, the Director of the USPTO has the authority to grant access to patent applications in certain circumstances. According to MPEP 104:

“Access provided upon the written order of the Director will also become a part of the record of the application.”

Additionally, the MPEP states:

“Where an applicant relied on the applicant’s application as a means to interfere with a competitor’s business or customers, permission to inspect the application may be given the competitor by the Director. Such permission is via petition for access under 37 CFR 1.14(i).”

This means that in special cases, particularly where there may be competitive interests at stake, the Director can authorize access to an application. However, this permission is not of a continuing nature and may be subject to reevaluation based on changing circumstances.

For more information on Patent application access, visit: Patent application access.

For more information on petition for access, visit: petition for access.

Yes, but with limitations. According to MPEP 104:

“A person acting in a representative capacity under 37 CFR 1.34 may execute a power to inspect an application only if the patent practitioner was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495 and a power of attorney has not been appointed under 37 CFR 1.32.”

This means that a representative can execute a power to inspect only if they were named in the initial application papers and no formal power of attorney has been filed. Once a power of attorney is filed, any previously filed power to inspect by a practitioner without power of attorney becomes ineffective.

For more information on power to inspect, visit: power to inspect.

For more information on representative capacity, visit: representative capacity.

No, powers to inspect are not accepted in Image File Wrapper (IFW) applications. IFW applications are available through the Private Patent Application Information Retrieval (PAIR) system, and pro se applicants and attorneys of record have direct access to the IFW through Private PAIR when:

• A Customer Number is associated with the correspondence address for the application, and
• The applicant or attorney has access to Private PAIR for the customer number

In addition, IFW application files of published applications or patents are available at least through Patent Center. If an applicant, inventor, assignee, or attorney/agent of record cannot view an IFW application through Private PAIR or Patent Center, then a copy of the application must be purchased from the Patent and Trademark Copy Fulfillment Branch of the Public Records Division.

If a suspended practitioner is given power to inspect a patent application, the USPTO will not accept it. MPEP 105 clearly states: “Power to inspect given to such an attorney or agent will not be accepted.” This means that even if an applicant or inventor attempts to grant inspection rights to a suspended practitioner, the USPTO will reject this authorization and prevent the suspended practitioner from accessing the application materials.

To learn more:

• Power to Inspect
• Suspended Practitioners
• USPTO Procedures
• Patent Application Access
• Rejection of Authorization

The USPTO refers to ‘suspended or excluded practitioners’ in MPEP 105 as “an attorney or agent who has been suspended or excluded from practice by the USPTO.” This typically refers to patent attorneys or agents who have faced disciplinary action and are temporarily or permanently barred from practicing before the USPTO. These individuals are subject to specific restrictions, including the inability to communicate with USPTO employees about patent applications or inspect application materials, unless they are the inventor or applicant.

To learn more:

• Suspended Practitioner
• Excluded Practitioner
• USPTO Definitions
• Patent Attorney
• Patent Agent

In most cases, no. USPTO employees are prohibited from communicating, either orally or in writing, with a suspended or excluded patent attorney or agent regarding a patent application. The MPEP states:

USPTO employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application…

The only exception is if the suspended or excluded practitioner is the inventor or applicant on that specific application. Otherwise, USPTO staff cannot discuss an application with a practitioner who has been suspended or excluded from practice before the USPTO.

No, a suspended or excluded practitioner cannot inspect patent applications. According to MPEP 105, “Power to inspect given to such an attorney or agent will not be accepted.” This means that the USPTO will not allow suspended or excluded practitioners to access or review patent applications, even if they are given permission by the applicant.

To learn more:

• Patent Applications
• Suspended Practitioners
• Excluded Practitioners
• USPTO Procedures
• Patent Inspection

No, a patent attorney or agent who has been suspended or excluded from practice by the USPTO cannot inspect patent applications, unless they are an inventor or applicant on that particular application. The MPEP states:

USPTO employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it is one in which said attorney or agent is an inventor or the applicant. Power to inspect given to such an attorney or agent will not be accepted.

This policy prevents suspended or excluded practitioners from accessing confidential application information they are no longer authorized to view.

Generally, no. MPEP 105 states: “U.S. Patent and Trademark Office (USPTO) employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application.” This prohibition applies to all forms of communication about patent applications with suspended or excluded practitioners.

To learn more:

• USPTO Employees
• Communication Rules
• Suspended Practitioners
• Excluded Practitioners
• Patent Applications

Yes, there is one exception to the communication ban. According to MPEP 105, USPTO employees may communicate with a suspended or excluded practitioner “unless it is one in which said attorney or agent is an inventor or the applicant.” This means that if the suspended or excluded practitioner is listed as an inventor or is the applicant on a patent application, USPTO employees are allowed to communicate with them regarding that specific application.

To learn more:

• Communication Exceptions
• Suspended Practitioners
• Excluded Practitioners
• Inventor-Applicant
• USPTO Procedures

Yes, there is one exception. A suspended or excluded patent attorney or agent can inspect an application if they are the inventor or applicant of that particular application. The MPEP clarifies:

USPTO employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application unless it is one in which said attorney or agent is an inventor or the applicant.

So while suspended or excluded practitioners generally cannot inspect applications, they can still access ones in which they are directly involved as the inventor or applicant.

A patent application typically becomes publicly accessible after it is published. MPEP 106 states:

Of course, after the application has published pursuant to 35 U.S.C. 122(b), the application will be available to the public and any restriction on the inventor to access his or her application previously granted will no longer be in effect.

This publication usually occurs 18 months after the earliest filing date of the application, as per 35 U.S.C. 122(b). At this point, any previous restrictions on access, including those placed on inventors, are lifted, and the application becomes part of the public record.

For more information on public access, visit: public access.

An assignee of the entire interest in a patent application has broader rights regarding inspection compared to a part interest assignee. According to MPEP 106.01, an assignee of the entire interest may inspect the application file wrapper and be granted access to the subject matter of the application. This is because they have acquired all rights to the patent application and are considered to have stepped into the shoes of the inventor(s) for all practical purposes related to the application.

According to MPEP 106.01, assignees of a part interest or licensees of exclusive right have the right to inspect the patent application. The MPEP states:

“[A]n assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.”

However, it’s important to note that these parties do not have the right to intervene in the prosecution of the application or interference, which is reserved for the assignee of record of the entire interest.

For more information on partial assignee rights, visit: partial assignee rights.

For more information on patent application inspection, visit: patent application inspection.

Partial assignees and exclusive licensees have specific rights regarding patent application inspection. According to MPEP 106.01, “an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.” This means that even if you don’t own the entire interest in a patent application, you still have the right to review its contents.

However, it’s important to note that partial assignees cannot intervene in the prosecution of an application or interference to the exclusion of the applicant. Only the assignee of record of the entire interest has this ability.

For more information on patent rights, visit: patent rights.

Partial assignees have limited rights regarding the inspection of patent applications. According to MPEP 106.01, an assignee of a part interest in a patent application is not entitled to inspect the application without written authority from the inventor or the other assignee(s). This restriction is in place to protect the interests of all parties involved in the patent application process.

37 CFR 1.46 is significant in patent application prosecution, particularly for applications filed on or after September 16, 2012. According to MPEP 106.01, this regulation allows the assignee of record of the entire interest to become the applicant and prosecute the application.

The MPEP states: ‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This regulation is part of the changes implemented by the America Invents Act (AIA) and provides more flexibility for assignees in managing patent applications.

Access restrictions on patent applications change significantly after publication. According to MPEP 106, “Of course, after the application has published pursuant to 35 U.S.C. 122(b), the application will be available to the public and any restriction on the inventor to access his or her application previously granted will no longer be in effect.”

This means that once a patent application is published, typically 18 months after the earliest filing date, any previously imposed restrictions on access, including those on the inventor, are lifted. The application becomes publicly accessible, aligning with the USPTO’s goal of promoting transparency in the patent process.

For more information on public availability, visit: public availability.

For more information on USPTO procedures, visit: USPTO procedures.

If an assignee of a part interest refuses to join in an application for reissue, the reissue may still be applied for by the assignee of the entire interest. This is outlined in MPEP 1410. The assignee of the entire interest can file the reissue application as the sole applicant. However, the assignee must comply with the requirements of 37 CFR 1.172, which includes submitting an oath or declaration by the assignee.

The MPEP 106.01 highlights a key difference in assignee rights for patent applications filed before and after September 16, 2012:

• For applications filed before September 16, 2012: The assignee of record of the entire interest can intervene in the prosecution of an application or interference to the exclusion of the applicant.
• For applications filed on or after September 16, 2012: The assignee of record of the entire interest can not only intervene but also prosecute the application after becoming the applicant under 37 CFR 1.46.

For more detailed information, the MPEP directs readers to:

• MPEP § 324 for applications filed before September 16, 2012
• MPEP § 325 for applications filed on or after September 16, 2012

The USPTO verifies an assignee’s right to inspect a patent application through documentation. As per MPEP 106.01, the assignee must provide either a copy of the assignment recorded in the USPTO or other evidence of ownership. This documentation is necessary to establish the assignee’s legal right to access the confidential information contained in the patent application.

When the USPTO receives conflicting instructions from multiple assignees or co-inventors regarding a patent application, it follows a specific protocol to ensure fair treatment of all parties. According to MPEP 106, the USPTO will not arbitrate disputes between the parties.

In such cases, the USPTO typically:

• Suspends action on the application until the conflict is resolved
• Notifies all parties of the conflicting instructions
• Advises the parties to resolve the dispute among themselves or through the courts
• Resumes prosecution only when clear, consistent instructions are received from all interested parties or when a court order is issued

This approach ensures that the USPTO remains neutral and that the rights of all assignees and inventors are protected throughout the patent prosecution process.

The filing date of a patent application can affect the prosecution rights of assignees. MPEP 106.01 distinguishes between applications filed before and after September 16, 2012:

• For applications filed before September 16, 2012: See MPEP § 324 for information on prosecution by the assignee.
• For applications filed on or after September 16, 2012: See MPEP § 325 for details on prosecution by the assignee.

The MPEP states: “For information pertaining to prosecution by the assignee, see MPEP § 324 (for applications filed before September 16, 2012) and MPEP § 325 (for applications filed on or after September 16, 2012).”

This distinction is important because the America Invents Act, which went into effect on September 16, 2012, introduced changes to patent law that affected assignee rights and procedures.

For more information on America Invents Act, visit: America Invents Act.

For more information on patent law changes, visit: patent law changes.

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:

‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’

This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.

For more detailed information on how the AIA affects assignee rights, refer to MPEP § 325 for applications filed on or after September 16, 2012.

An inventor’s access to their patent application can be restricted, but it requires a specific process. According to MPEP 106, “Any request to prevent the inventor from obtaining access to the file should be filed as a separate paper, 37 CFR 1.4(c), and should be directed to the Office of Petitions.”

If the request is granted, the inventor will be informed that they can only inspect the application if they can show why such inspection is necessary to conserve their rights. It’s important to note that this restriction is temporary. Once the application is published under 35 U.S.C. 122(b), it becomes publicly available, and any previously granted restrictions on the inventor’s access will no longer be in effect.

For more information on inventor access, visit: inventor access.

For more information on Office of Petitions, visit: Office of Petitions.

Inventors or applicants can control access to their patent application by assignees through explicit consent or denial. As outlined in MPEP 106.01, the applicant has the right to decide whether to grant or deny access to the application, especially in cases involving part interest assignees. This control mechanism allows inventors to protect sensitive information or maintain strategic advantage during the patent prosecution process. Applicants can communicate their consent or denial of access to the USPTO, which will then enforce these preferences regarding application inspection.

While it’s uncommon, there is a process for restricting an inventor’s access to their patent application. According to MPEP 106:

Any request to prevent the inventor from obtaining access to the file should be filed as a separate paper, 37 CFR 1.4(c), and should be directed to the Office of Petitions. If the request is granted, the inventor will be informed that he or she will only be permitted to inspect the application on sufficient showing why such inspection is necessary to conserve his or her rights.

This process requires a specific request and justification. It’s important to note that such restrictions are temporary, as the MPEP also states, Of course, after the application has published pursuant to 35 U.S.C. 122(b), the application will be available to the public and any restriction on the inventor to access his or her application previously granted will no longer be in effect.

For more information on inventor access, visit: inventor access.

For more information on Office of Petitions, visit: Office of Petitions.

No, once a patent application publishes under 35 U.S.C. 122(b), it becomes available to the public. At that point, any previous grant restricting the inventor’s access to the application file is no longer in effect.

Of course, after the application has published pursuant to 35 U.S.C. 122(b), the application will be available to the public and any restriction on the inventor to access his or her application previously granted will no longer be in effect.

Yes, an assignee of the entire interest in a patent application can grant inspection rights to others. According to MPEP 106.01, the assignee of the entire interest has the same rights as the inventor and may authorize anyone to inspect the application. This authority stems from the assignee’s complete ownership of the patent application.

No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.

The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.

No, an assignee of a part interest in a patent application cannot inspect the application without the consent of the inventor or other assignees. According to MPEP 106.01, the assignee of a part interest may not have access to the application file wrapper or be granted access to the subject matter of the application without the applicant’s consent. This restriction is in place to protect the interests of all parties involved in the patent application process.

No, an assignee of a part interest alone cannot file a reissue application. According to MPEP 1410, a reissue application must be applied for by all of the inventors, unless the application is accompanied by a petition under 37 CFR 1.182 for waiver of the requirement. Alternatively, the assignee of the entire interest can file the reissue application. An assignee of only a part interest is not entitled to file a reissue application on his or her own.

Yes, an assignee of record of the entire interest in a patent application can control access to it. According to MPEP 106, “The applicant or assignee of record of the entire interest in an application may file an application or intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice.” This means that the assignee can manage the application’s prosecution and potentially limit access to it.

However, it’s important to note that “Such an application filing or intervention, however, does not exclude the inventor from access to the application to see that it is being prosecuted properly, unless the applicant or assignee makes specific request to that effect.” Any request to prevent the inventor’s access must be filed separately and directed to the Office of Petitions.

For more information on assignee rights, visit: assignee rights.

For more information on inventor access, visit: inventor access.

For more information on Office of Petitions, visit: Office of Petitions.

Yes, the applicant or assignee of record of the entire interest in an application can make a specific request to prevent the inventor from obtaining access to the application file. This request should be filed as a separate paper under 37 CFR 1.4(c) and directed to the Office of Petitions. If granted, the inventor will only be permitted to inspect the application upon sufficient showing of why it is necessary to preserve their rights.

Any request to prevent the inventor from obtaining access to the file should be filed as a separate paper, 37 CFR 1.4(c), and should be directed to the Office of Petitions. If the request is granted, the inventor will be informed that he or she will only be permitted to inspect the application on sufficient showing why such inspection is necessary to conserve his or her rights.

Yes, according to MPEP 106.01, an assignee of a part interest or a licensee of exclusive right is entitled to inspect the patent application. The MPEP states: ‘an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.’

This right to inspection is distinct from the right to intervene in or prosecute the application, which is reserved for the assignee of the entire interest.

The USPTO has specific rules for making international application files available to the public. According to MPEP 110, which cites 37 CFR 1.14(g), After publication of an application under 35 U.S.C. 122(b), the USPTO will make available copies of the application files and also allow for access to those files in accordance with 37 CFR 1.14(a). Specifically for international applications, after publication of an international application designating the U.S. under PCT Article 21, the USPTO will make available copies of, and allow access to, those international application files which are kept in the USPTO. However, this access is subject to certain conditions and restrictions, such as the payment of appropriate fees and the exclusion of certain documents like the Examination Copy.

For more information on public access, visit: public access.

For more information on USPTO, visit: USPTO.

Third parties cannot access an international patent application until the earliest of:

• The international publication date
• Date of receipt of the communication of the application under PCT Article 20
• Date of receipt of a copy of the application under PCT Article 22

This is specified in PCT Article 30(2)(a):

“No national Office shall allow access to the international application by third parties, unless requested or authorized by the applicant, before the earliest of the following dates: (i) date of the international publication of the international application, (ii) date of receipt of the communication of the international application under Article 20, (iii) date of receipt of a copy of the international application under Article 22.”

National offices have specific restrictions on allowing access to international patent applications. According to MPEP 110, which cites PCT Article 30(2)(a), No national Office shall allow access to the international application by third parties unless requested or authorized by the applicant, before the earliest of the following dates:

• Date of international publication
• Date of receipt of the communication under PCT Article 20
• Date of receipt of a copy under PCT Article 22

This provision ensures that the confidentiality of the application is maintained until certain milestones in the patent process are reached.

International patent applications are kept confidential before their international publication, as specified in MPEP 110. According to PCT Article 30, the International Bureau and the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of that application, unless requested or authorized by the applicant. This confidentiality ensures that inventors’ rights are protected during the early stages of the patent process.

For more information on international patent applications, visit: international patent applications.

International patent applications filed under the PCT are generally kept confidential and not made publicly available before international publication, which occurs soon after the expiration of 18 months from the priority date, according to PCT Article 21(2)(a). The International Bureau and International Searching Authorities are not allowed to give access to the application to any person or authority before publication unless requested or authorized by the applicant, with some exceptions.

As stated in MPEP 110:

“Although most international applications are published soon after the expiration of 18 months from the priority date, PCT Article 21(2)(a), such publication does not open up the Home Copy or Search Copy to the public for inspection, except as provided in 37 CFR 1.14(g).”

While national offices are generally restricted from allowing access to international patent applications, they can disclose limited information. According to MPEP 110, which cites PCT Article 30(2)(b), national offices may inform third parties that they have been designated and publish this fact. However, such information or publication is limited to:

• Identification of the receiving Office
• Name of the applicant
• International filing date
• International application number
• Title of the invention

This provision allows for some transparency in the patent process while still maintaining the confidentiality of the application’s details.

For more information on international patent applications, visit: international patent applications.

The United States Patent and Trademark Office (USPTO) has specific procedures for maintaining the confidentiality of international applications filed in the U.S. According to MPEP 110, which references 35 U.S.C. 368, International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17. This means that such applications are subject to the same secrecy provisions as regular U.S. patent applications. Additionally, If a license to file in a foreign country is refused or if an international application is ordered to be kept secret and a permit refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or International Preliminary Examining Authority, may not disclose the contents of such application to anyone not authorized to receive such disclosure. This ensures that sensitive information in international applications is protected in accordance with U.S. law.

For more information on international applications, visit: international applications.

For more information on USPTO, visit: USPTO.

A national patent office may inform third parties that it has been designated in an international application and publish that fact. However, the publication can only contain limited bibliographic data, as specified in PCT Article 30(2)(b):

“Such information or publication may, however, contain only the following data: identification of the receiving Office, name of the applicant, international filing date, international application number, and title of the invention.”

The national office still cannot allow third parties to access the full application until the conditions outlined in PCT Article 30(2)(a) are met.

While the initial screening for sensitive subject matter is performed by designated personnel, patent examiners also play a crucial role in this process. The MPEP states:

While the initial screening is performed only by designated personnel, all examiners have a responsibility to be alert for obviously sensitive subject matter either in the original disclosure or subsequently introduced, for example, by amendment.

If an examiner identifies potentially sensitive subject matter, they are instructed to take action:

If the examiner is aware of subject matter which should be subject to screening by appropriate office personnel, this should be brought to the attention of Licensing and Review.

This ongoing vigilance by examiners helps ensure that sensitive information is not inadvertently disclosed, even if it was not identified during the initial screening process.

For more information on Patent examiners, visit: Patent examiners.

All provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), international applications filed under the PCT, and international design applications filed under the Hague Agreement are reviewed by the USPTO for three main purposes:

1. To determine if a foreign filing license can be granted under 35 U.S.C. 184
2. To identify inventions in which the Department of Energy (DOE) or NASA might have property rights
3. To determine if the application contains subject matter detrimental to national security that warrants a secrecy order under 35 U.S.C. 181

The process for obtaining a foreign filing license is part of the USPTO’s screening procedure for patent applications. The MPEP states:

A third function of the screening procedure is to process foreign filing license petitions under37 CFR 5.12(a). SeeMPEP § 140.

The foreign filing license is automatically granted in most cases as part of the application filing process. However, if the application contains subject matter that requires further review, the applicant may need to petition for a foreign filing license separately.

To obtain a foreign filing license, applicants should:

1. File a patent application with the USPTO
2. Wait for the automatic screening process to complete
3. If a license is not automatically granted, file a petition under 37 CFR 5.12(a)
4. Provide any additional information requested by the USPTO

It’s important to note that filing an application abroad without first obtaining a foreign filing license can have serious consequences, including abandonment of the U.S. application and potential criminal penalties.

For more information on foreign filing license, visit: foreign filing license.

For more information on patent applications, visit: patent applications.

For more information on USPTO procedures, visit: USPTO procedures.

A Secrecy Order is a directive issued by the Commissioner for Patents to keep an invention secret and withhold the publication of a patent application or the grant of a patent. It is issued when:

1. A defense agency concludes that disclosure of the invention would be detrimental to national security
2. The agency recommends a Secrecy Order to the Commissioner for Patents

According to 35 U.S.C. 181, Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.

The Secrecy Order remains in effect for such period as the national interest requires, effectively preventing public disclosure of the invention.

For more information on patent applications, visit: patent applications.

If a defense agency concludes that disclosure of the invention would be detrimental to national security, they will recommend a secrecy order to the Commissioner for Patents. The Commissioner will then issue the secrecy order and withhold publication of the application or granting of a patent for as long as the national interest requires.

“If a defense agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.”

National security classified patent applications may be filed with the USPTO in the following ways:

• Hand-carried to Licensing and Review
• Mailed to the USPTO in compliance with 37 CFR 5.1(a) and Executive Order 13526
• Filed via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) – these will be considered filed via the USPTO patent electronic filing system

The applicant must also either obtain a secrecy order or provide authority to cancel the security markings per 37 CFR 5.1(d).

The USPTO has specific procedures for handling foreign language provisional applications during the screening process. According to the MPEP:

Provisional applications filed in a foreign language are also screened under these provisions. The Office will make an attempt to determine the subject matter of the application, but the applicant may be required to provide at least an English language abstract of the information for screening purposes.

To avoid potential delays in the screening process, the MPEP strongly recommends:

It is strongly recommended that if the applicant is in possession of an English language description of the technology, it should be filed with the provisional application to prevent screening delays.

This recommendation helps ensure that the USPTO can efficiently review the application for national security and property rights issues without language barriers impeding the process.

For more information on patent procedure, visit: patent procedure.

The USPTO has specific procedures for handling applications in which the government may have a property interest. According to the MPEP:

For those applications in which the Government has a property interest (including applications indicating national security classified subject matter), responsibility for notifying the Commissioner for Patents of the need for a Secrecy Order resides with the agency having that interest.

Additionally, the screening process identifies inventions that may be of interest to specific government agencies:

A second purpose for the screening of all applications, with an exception for provisional applications, is to identify inventions in which DOE or NASA might have property rights. See42 U.S.C. 2182,51 U.S.C. 20135, andMPEP § 150.

This process ensures that government agencies are notified of inventions that may fall under their purview and allows them to take appropriate action, such as requesting a Secrecy Order if necessary.

For more information on patent applications, visit: patent applications.

The USPTO has a specific process to ensure that all applications are cleared from secrecy review before they are issued as patents. According to the MPEP:

All applications are required to be cleared from secrecy review before forwarding to issue. If the L&R code on the general information display does not equal 1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS.

The USPTO uses a system called the Patent Data Portal (PDP) to track the status of applications:

The Patent Data Portal (PDP) System’s general information display discloses the current Licensing and Review status. The indicator “L&R code” displays the current status of the application while the indicators “Third Level Review” and “Secrecy Order” display the historical status of the application.

Specific codes are used to indicate the status of an application:

• An L&R code of “3” or a “Third Level Review” of “Yes” indicates that the application is/has been considered for security screening.
• A Secrecy Code of “4” indicates that the application is currently under Secrecy Order.

If an application is under Secrecy Order, special handling is required:

In this case, the application has been converted to a paper application file and there should be no images maintained in the Image File Wrapper system (IFW).

This process ensures that no application is issued as a patent until it has been fully cleared from secrecy review, protecting sensitive information and national security interests.

For more information on patent issuance, visit: patent issuance.

For more information on USPTO procedures, visit: USPTO procedures.

National security classified patent applications require special handling by the USPTO. The MPEP states that:

National security classified documents filed in the USPTO must be either hand-carried to Licensing and Review or mailed to the Office in compliance with37 CFR 5.1(a)and Executive Order 13526 of December 29, 2009.

However, the USPTO has made provisions for secure electronic filing:

The Office will accept such applications filed with the USPTO via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) and consider them as filed via the USPTO patent electronic filing system for purposes of37 CFR 1.16(t)and37 CFR 1.445(a)(ii).

Applicants filing national security classified applications must also obtain a secrecy order or provide authority to cancel the security markings, as per37 CFR 5.1(d). The USPTO’s Licensing and Review office can provide a list of contacts at the appropriate defense agencies for this purpose.

For more information on classified patent applications, visit: classified patent applications.

A Secrecy Order applies to the subject matter of the invention, not just the patent application itself. It restricts disclosure or publication of the invention in any form. Other related patent applications which contain any significant part of the subject matter also fall under the scope of the order and must be brought to the USPTO’s attention. (MPEP 120 Section II)

A secrecy order is issued to prevent the disclosure of sensitive information in patent applications that could be detrimental to national security. According to MPEP 120, “The purpose of this Act is to prevent disclosure of inventions by the publication of applications or by the granting of patents that might be detrimental to the national security.” These orders are typically issued for inventions that have military applications or involve critical technologies.

For more information on invention disclosure, visit: invention disclosure.

A Secrecy Order is an order issued by the Commissioner for Patents that prevents disclosure or publication of an invention in a patent application when the publication or disclosure would be detrimental to national security. The order requires that the invention be kept secret and may restrict filing of foreign patent applications. (MPEP 120)

A Secrecy Order is an official directive issued by the Commissioner for Patents when notified by the chief officer of a defense agency that publication or disclosure of an invention through a patent grant would be detrimental to national security. As stated in 37 CFR 5.2(a):

When notified by the chief officer of a defense agency that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner for Patents.

This order restricts disclosure of the invention and delays the grant of a patent until the order is rescinded.

What happens if a secrecy order is violated?

Violating a secrecy order can have serious consequences. According to MPEP 120, “Unauthorized disclosure of the subject matter of an application under a secrecy order is punishable by a fine and/or imprisonment (35 U.S.C. 186), and may result in loss of patent rights (35 U.S.C. 182).” This means that individuals who disclose information about an application under a secrecy order without proper authorization may face:

• Monetary fines
• Imprisonment
• Loss of patent rights

It’s crucial for inventors, patent agents, and attorneys to strictly adhere to secrecy orders to avoid these severe penalties.

For more information on unauthorized disclosure, visit: unauthorized disclosure.

There are three types of Secrecy Orders, each with a different scope:n

n
1. Type I – Secrecy Order and Permit for Foreign Filing in Certain Countries

n

2. Type II – Secrecy Order and Permit for Disclosing Classified Information

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3. Type III – General Secrecy Order

n

nThe Type I order permits filing in certain countries with security agreements, Type II allows classified or classifiable disclosure, and Type III prevents disclosure without written consent from the Commissioner. (MPEP 120 Section I)

Violating a secrecy order can have severe consequences. According to MPEP 120, “Unauthorized disclosure of the subject matter of an application under a secrecy order is punishable by a fine and/or imprisonment.” Specifically:

• The fine can be up to $10,000
• Imprisonment can be up to two years
• These penalties apply for each offense

Additionally, violation of a secrecy order can result in the abandonment of the application. It’s crucial for inventors and patent practitioners to strictly adhere to secrecy orders to avoid these serious legal consequences.

Violating a secrecy order on a patent application can have severe consequences. MPEP 120 states, “If, prior to or after the issuance of the secrecy order, any significant part of the subject matter or material information relevant to the application has been or is revealed to any U.S. citizen in the United States, the principals must promptly inform such person of the secrecy order and the penalties for improper disclosure.” The penalties for violation can include:

• Abandonment of the application (35 U.S.C. 182)
• Criminal penalties, including fines and imprisonment (35 U.S.C. 186)
• Loss of patent rights (35 U.S.C. 184)

It’s crucial for applicants and their representatives to strictly adhere to secrecy orders to avoid these serious consequences.

Under 35 U.S.C. 181, a Secrecy Order remains in effect for a period of 1 year from its date of issuance. It may be renewed for additional periods of not more than 1 year upon notice by a government agency that the national interest requires it. The applicant is notified of any renewal. (MPEP 120 Section VII)

A secrecy order can remain in effect for a significant period. As stated in MPEP 120, “The secrecy order may remain in effect for the duration of the national emergency and six months thereafter and automatically expires at the end of that period.” However, it’s important to note that:

• The order can be renewed if necessary
• It can be terminated earlier if the reasons for its issuance no longer exist
• The total duration is subject to the provisions of 35 U.S.C. 181

For more information on secrecy order duration, visit: secrecy order duration.

How does a secrecy order affect patent term and maintenance fees?

A secrecy order can have significant impacts on both the patent term and maintenance fees. According to MPEP 120:

“If the application is found to be allowable during the secrecy order period, it will be passed to issue upon the removal or rescission of the secrecy order.”

This means that while under a secrecy order:

• The patent application’s examination continues, but issuance is delayed.
• The patent term may be affected, as it typically begins on the issue date.
• No maintenance fees are due until the patent is issued.

However, the law provides some compensation for these delays. “The term of the patent may be extended for the period of delay due to the secrecy order pursuant to 35 U.S.C. 154(b).” This extension helps to offset the time lost due to the secrecy order, ensuring that inventors don’t lose patent protection time unfairly.

For more information on patent term, visit: patent term.

A Secrecy Order significantly impacts the prosecution of a patent application. According to 37 CFR 5.3:

Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section.

Key effects include:

• Applications under final rejection must be appealed or prosecuted to avoid abandonment, but appeals won’t be set for hearing until the Secrecy Order is removed.
• Interferences or derivation proceedings won’t be instituted for applications under Secrecy Order.
• When the application is in condition for allowance, the applicant and the relevant agency will be notified, but no notice of allowance will be issued until the Secrecy Order is removed.
• International applications under Secrecy Order won’t be transmitted to international authorities or the applicant.

These restrictions ensure that sensitive information remains protected while allowing some progress in the application process.

For more information on international applications, visit: international applications.

For more information on patent prosecution, visit: patent prosecution.

A secrecy order significantly impacts the foreign filing of a patent application. According to MPEP 120:

“The issuance of a secrecy order does not alter the applicant’s right to appeal to the Patent Trial and Appeal Board or to file a civil action under 35 U.S.C. 145 or 146, except that if such appeal or civil action involves national security issues, prior approval of the Commissioner for Patents must be obtained.”

This means:

• The applicant cannot file the application in foreign countries without permission
• Foreign filing licenses are not granted while a secrecy order is in effect
• The applicant must wait for the secrecy order to be lifted before pursuing international patent protection
• Any attempt to file abroad without authorization could result in abandonment of the U.S. application and other penalties

It’s crucial for inventors to understand these restrictions to maintain their patent rights and avoid legal issues.

For more information on foreign filing license, visit: foreign filing license.

Yes, an applicant can petition for rescission or modification of a Secrecy Order. The MPEP states:

Applicants may petition for rescission or modification of the Secrecy Order. For example, if the applicant believes that certain existing facts or circumstances would render the Secrecy Order ineffectual, they may informally contact the sponsoring agency to discuss these facts or formally petition the Commissioner for Patents to rescind the Order.

The process for petitioning is outlined in 37 CFR 5.4 and 5.5. Key points include:

• Petitions must be filed in duplicate and recite facts that purport to render the order ineffectual or futile.
• For modification to permit foreign filing, all countries and disclosees must be identified.
• Appeals can be made to the Secretary of Commerce if a petition for rescission is denied.

Applicants should carefully consider the reasons for seeking rescission or modification and provide comprehensive information in their petition.

Yes, an applicant can appeal a secrecy order issued on their patent application. According to MPEP 120, “An appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied.” This means that the applicant must first:

1. Petition for rescission of the secrecy order
2. If the petition is denied, then appeal to the Secretary of Commerce

The appeal process is governed by the provisions of 35 U.S.C. 181 and provides a mechanism for applicants to challenge the imposition of a secrecy order.

Yes, applicants may petition for rescission or modification of a Secrecy Order:n

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• Applicants can informally contact the sponsoring defense agency to discuss rendering the order ineffectual, or formally petition the Commissioner for Patents to rescind the order.

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• Rescission may also be possible by expunging sensitive subject matter from the application, if it’s not needed for an enabling disclosure under 35 U.S.C. 112.

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• Applicants can also petition for a permit to disclose the invention to another or to modify the order, fully stating the reason or purpose. (MPEP 120 Section V)

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Yes, a secrecy order can be appealed or reviewed. The MPEP 120 states: “A petition for rescission or modification of the secrecy order may be filed at any time.” Here’s what you need to know about the appeal process:

• The petition should be filed with the Patent and Trademark Office (PTO)
• It must include full statements of all facts and circumstances upon which the petition is based
• The petition will be referred to the appropriate agency for consideration and recommendation
• Based on the recommendation, the Commissioner for Patents will make the final decision

If the secrecy order is not rescinded, the applicant may seek further review through legal channels, such as filing a claim in the United States Court of Federal Claims.

Can a secrecy order be appealed or challenged?

Yes, a secrecy order can be appealed or challenged. The MPEP 120 states: “A petition for rescission or modification of the secrecy order may be filed by the principal inventor, any of the joint inventors, or the assignee.” This means that:

• The principal inventor
• Any joint inventors
• The assignee of the patent application

can file a petition to challenge or seek modification of a secrecy order. The petition should be directed to the Commissioner for Patents and should include supporting reasons for the requested rescission or modification. It’s important to note that while an appeal is possible, secrecy orders are typically issued for national security reasons, so the process of challenging them can be complex and may require careful consideration of security implications.

Can a patent application under secrecy order be appealed?

Yes, patent applications under secrecy orders can be appealed, but with certain restrictions. MPEP 120 states: ‘Appeals to the Patent Trial and Appeal Board and petitions to the Director under 37 CFR 1.181 are available to the applicant in secrecy order cases, but those actions will not set aside the secrecy order.‘ This means that while you can appeal decisions related to the patentability of your application, such appeals cannot challenge or remove the secrecy order itself. The secrecy order remains in effect regardless of the appeal process.

For more information on patent appeal, visit: patent appeal.

For more information on patent procedure, visit: patent procedure.

For more information on patent trial and appeal board, visit: patent trial and appeal board.

Applications subject to a Secrecy Order will be:

• Deleted from any image file system within the USPTO
• Converted to paper
• Held with Licensing and Review
• Transferred to a designated examiner for examination

For applications filed with apparent national security markings, the USPTO will:

1. Notify the applicant via Licensing and Review
2. Ask the applicant to either:
   • Explain the markings
   • Remove improper markings
   • Obtain a Secrecy Order if necessary
3. Potentially refer the application to a defense agency for review under 35 U.S.C. 181 second paragraph if improper markings are found and removed

What are the requirements for personnel working with secrecy order applications?

Personnel working with secrecy order applications must meet specific security requirements. MPEP 121 outlines these requirements:

• Must have proper security clearance
• Are responsible for maintaining the secrecy of the applications
• Must ensure applications are returned to secure storage when not in use

The MPEP emphasizes: ‘All applications bearing national security markings must be examined by properly cleared examiners.’ This ensures that only authorized individuals with the necessary security clearance have access to these sensitive patent applications, maintaining their confidentiality and national security integrity.

What are the procedures for transmitting secrecy order applications within the USPTO?

The transmission of secrecy order applications within the USPTO follows strict security protocols. MPEP 121 outlines these procedures:

• Applications are hand-carried by authorized personnel
• Transmittal slips are used to track the movement of applications
• Applications must be signed for upon receipt

The MPEP emphasizes: ‘Classified material must be transmitted between offices in the Patent and Trademark Office in designated classified carriers.’ This ensures that secrecy order applications are always under secure control and their location is known at all times, minimizing the risk of unauthorized access or loss.

The MPEP states:

All applications or papers, including non-patent literature, in the U.S. Patent and Trademark Office bearing words such as “Secret,” “Confidential,” “ITAR” or similar must be promptly referred to Licensing and Review for clarification or security treatment.

These papers cannot be placed in public records like patented files until the security markings are declassified or explained.

How are classified documents marked at the USPTO?

Classified documents at the USPTO are marked with specific security classifications. According to MPEP 121:

• Documents are marked as ‘Secret,’ ‘Confidential,’ or ‘Restricted Data’
• These markings indicate the level of security required for handling the document
• Each page of a classified document must bear the appropriate marking

The MPEP states: ‘All papers in the application and contents of the file jacket are marked with the highest level of security to which the application has been assigned.’ This ensures that all parts of the application are treated with the appropriate level of security throughout the examination process.

How are applications under secrecy order handled at the USPTO?

Applications under secrecy order at the USPTO are handled with strict security measures. According to MPEP 121, these applications are:

• Stored in special safes or in metal cabinets equipped with three-position dial-type combination locks
• Never removed from these secure storage areas except for processing
• Processed and examined only by properly cleared personnel

The MPEP states: ‘Applications bearing national security markings must be stored in a safe or in metal cabinets equipped with a bar and a padlock.’ This ensures that access to these sensitive applications is strictly controlled and limited to authorized individuals only.

For more information on patent application handling, visit: patent application handling.

When an examiner encounters an application with national security markings but no Secrecy Order, they must take specific actions. The MPEP instructs: In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application. This ensures that potentially sensitive information is properly handled during the examination process.

For more information on national security markings, visit: national security markings.

For more information on patent examination, visit: patent examination.

As explained in MPEP 130, when a patent application under a Secrecy Order is in condition for allowance, “a notice of allowability (Form D-10) is issued, thus closing the prosecution.” See 37 CFR 5.3(c).

After the notice of allowability is issued, any amendments received are not entered or responded to until the Secrecy Order is rescinded. Once the Secrecy Order is rescinded, amendments will be entered if they are free from objections, otherwise they will be denied entry.

When a Secrecy Order case is in condition for allowance, the prosecution is closed, but the patent is not issued. According to the MPEP, When a Secrecy Order case is in condition for allowance, a notice of allowability (Form D-10) is issued, thus closing the prosecution. This is in accordance with 37 CFR 5.3(c). The application remains in this state until the Secrecy Order is rescinded.

For more information on notice of allowability, visit: notice of allowability.

When a Secrecy Order is imposed on a patent application, it is examined in a secure location by examiners with national security clearances under the control of Licensing and Review. If the Secrecy Order is imposed after the application is already docketed in another Technology Center, it will be transferred to a designated examiner in Licensing and Review.

As stated in MPEP 130, “Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order.”

Secrecy order applications require special handling procedures to maintain their confidentiality. According to MPEP 130:

Applications and papers in the application file, as well as any related papers, must be safeguarded from disclosure to unauthorized persons and must be securely kept in a locked area when not actually in use.

Additionally:

• Secrecy order cases should not be processed on any automated information system (AIS) unless the AIS is certified for classified processing.
• All processing should be done in a secure environment by personnel with appropriate clearances.
• Special care must be taken to prevent inadvertent disclosure of classified information.

For more information on classified information, visit: classified information.

For more information on patent applications, visit: patent applications.

Secrecy order applications are subject to strict restrictions on foreign filing to protect national security. The MPEP 130 outlines these restrictions:

A secrecy order bars the filing of a foreign application based on the application under secrecy order without prior license from the Commissioner for Patents.

Key points regarding foreign filing restrictions:

• Filing a foreign application without authorization is prohibited.
• A license from the Commissioner for Patents is required for any foreign filing.
• Unauthorized foreign filing can result in severe penalties, including abandonment of the application.
• These restrictions are in place to prevent disclosure of sensitive information to foreign entities.

Inventors and applicants must be aware of these restrictions to avoid legal complications and potential national security breaches.

For more information on patent applications, visit: patent applications.

According to 37 CFR 5.1(d), an applicant must take one of three actions to prevent abandonment of a national security classified patent application without a Secrecy Order. The MPEP states: Pursuant to 37 CFR 5.1(d), if no Secrecy Order has issued in a national security classified patent application, the Office will set a time period within which the applicant must take one of the following three actions in order to prevent abandonment of the application: (A) obtain a Secrecy Order; (B) declassify the application; or (C) submit evidence of a good faith effort to obtain a Secrecy Order pursuant to 37 CFR 5.2(a). These actions ensure proper handling of potentially sensitive information.

For more information on patent abandonment, visit: patent abandonment.

If an examiner comes across a patent application that contains national security markings but does not have a Secrecy Order imposed, MPEP 130 instructs that “the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings.” This should be done preferably with the first office action and before final disposition of the application.

37 CFR 5.1(d) states that if no Secrecy Order has issued, the USPTO will set a time period for the applicant to take one of three actions to prevent abandonment:

1. Obtain a Secrecy Order
2. Declassify the application
3. Submit evidence of a good faith effort to obtain a Secrecy Order under 37 CFR 5.2(a)

Additionally, per 37 CFR 5.1(e), “a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.”

A national security classified patent application cannot be allowed until specific conditions are met. The MPEP clearly states: Pursuant to 37 CFR 5.1(e), a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded. This means that both declassification of the application and rescission of any Secrecy Order are necessary prerequisites for allowance.

For more information on declassification, visit: declassification.

Applications with Secrecy Orders are examined in a secure location by examiners with national security clearances under the control of Licensing and Review. As stated in the MPEP, All applications in which a Secrecy Order has been imposed are examined in a secure location by examiners possessing national security clearances under the control of Licensing and Review. This ensures that sensitive information remains protected during the examination process.

For more information on licensing and review, visit: licensing and review.

For more information on patent examination, visit: patent examination.

For patent applications under a Secrecy Order, prosecution proceeds as normal, including issuing final rejections that the applicant must properly reply to. If the applicant files an appeal, it must be completed to prevent abandonment of the application.

However, as noted in MPEP 130, “such appeal will not be set for hearing by the Patent Trial and Appeal Board until the Secrecy Order is removed, unless specifically ordered by the Commissioner for Patents.”

Amendments in Secrecy Order cases are handled differently from regular patent applications. The MPEP states: Any amendments received thereafter are not entered or responded to until such time as the Secrecy Order is rescinded. At such time, amendments which are free from objection will be entered; otherwise they are denied entry. This means that amendments are held in abeyance until the Secrecy Order is lifted, at which point they are reviewed for entry.

For more information on prosecution, visit: prosecution.

Amendments in secrecy order applications require special handling to maintain security. The MPEP 130 states:

In secrecy order cases, all proposed amendments to the specification and claims, and all provisional amendments to the abstract, drawings and claims must be submitted in duplicate for security review.

Key points about handling amendments in secrecy order cases include:

• Amendments must be submitted in duplicate for security review.
• One copy of the amendment is placed in the application file.
• The other copy is forwarded to a defense agency for review.
• The defense agency determines if the amendment can be entered without breaching national security.

This process ensures that any changes to the application maintain the required level of secrecy.

For more information on classified information, visit: classified information.

For more information on patent prosecution, visit: patent prosecution.

Allowed secrecy order applications require special handling to maintain security while progressing through the patent process. The MPEP 130 provides guidance on this:

When a secrecy order case is allowed, the Office of Patent Application Processing (OPAP) is notified. The notice of allowance and issue fee letters are drafted and reviewed in the Technology Center and may be hand carried to OPAP for mailing.

Key points about handling allowed secrecy order applications:

• The Office of Patent Application Processing (OPAP) is notified of the allowance.
• Notice of allowance and issue fee letters are carefully drafted and reviewed.
• These documents may be hand-carried to OPAP for mailing to ensure security.
• The application remains under secrecy order even after allowance.
• Special care is taken to prevent unauthorized disclosure throughout the process.

This careful handling ensures that the application’s classified status is maintained even as it progresses towards issuance.

For more information on classified information, visit: classified information.

For more information on patent issuance, visit: patent issuance.

No, patent applications under Secrecy Orders are not issued and cannot be involved in interferences or derivation proceedings. The MPEP states: Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order. This is further supported by 37 CFR 5.3 and MPEP § 2306.

For more information on patent issuance, visit: patent issuance.

The scope of a foreign filing license can vary depending on how it was obtained:

• Licenses granted through the filing of a US application (implicit petition) typically have a broad scope as defined in 37 CFR 5.15(a).
• Licenses granted through explicit petitions may have a narrower scope as defined in 37 CFR 5.15(b).
• Licensees with a narrow scope can petition to convert to a broader scope under 37 CFR 5.15(c).

As stated in the MPEP: “The scope of any license granted on these petitions is indicated on the license. Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are made of record in the application file.”

For more information on foreign filing license, visit: foreign filing license.

For more information on USPTO, visit: USPTO.

While both foreign filing licenses and secrecy orders are related to the protection of sensitive information in patent applications, they serve different purposes:

• Foreign Filing License: As described in MPEP 140, this is a permission granted by the USPTO to file a patent application in a foreign country. It’s typically granted routinely unless there are security concerns.
• Secrecy Order: This is an order issued under the Invention Secrecy Act (35 U.S.C. 181) to prevent disclosure of an invention that might be detrimental to national security. It prohibits both foreign filing and public disclosure of the invention.

A foreign filing license allows foreign filing, while a secrecy order prohibits it. An application under a secrecy order will not be granted a foreign filing license.

For more information on foreign filing license, visit: foreign filing license.

A retroactive foreign filing license is a license granted after an unlicensed foreign filing has already occurred. Key points include:

• It can be requested through a petition under 37 CFR 5.25.
• The unlicensed filing must have occurred through error.
• Specific requirements in 37 CFR 5.25 must be met, including providing detailed information about each unlicensed filing.
• A verified statement (oath or declaration) explaining the error is required.

The MPEP states: “A petition for a retroactive filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing has occurred through error. However, the requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted.”

For more information on foreign filing license, visit: foreign filing license.

For more information on USPTO, visit: USPTO.

A foreign filing license is permission granted by the USPTO to file a patent application in a foreign country. It is required when:

• An invention was made in the United States, and
• A US application has been filed less than 6 months ago, or
• No US application has been filed yet

As stated in 37 CFR 5.11(a): “A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent… in a foreign country… if the invention was made in the United States.”

For more information on foreign filing license, visit: foreign filing license.

For more information on USPTO, visit: USPTO.

Filing a foreign patent application without the required foreign filing license can have serious consequences. According to MPEP 140:

‘Inadvertent foreign filing without a license is not uncommon. The patent law provides for petition for retroactive license in such cases.’

However, it’s important to note that:

• The application may be considered abandoned in the U.S.
• You may lose the right to obtain a U.S. patent on that invention.
• There could be criminal penalties under 35 U.S.C. 181 and 35 U.S.C. 186.

If you’ve inadvertently filed without a license, you should immediately seek a retroactive foreign filing license from the USPTO.

For more information on foreign filing license, visit: foreign filing license.

Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:

‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’

In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.

For more information on foreign filing license, visit: foreign filing license.

Filing a foreign patent application without the required license can have severe consequences, including:

• Abandonment of the invention (35 U.S.C. 182)
• Inability to obtain a US patent (35 U.S.C. 185)
• Fines and imprisonment (35 U.S.C. 186)

As stated in 35 U.S.C. 185: “Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention.”

For more information on foreign filing license, visit: foreign filing license.

For more information on USPTO, visit: USPTO.

The time to obtain a foreign filing license from the USPTO can vary. According to MPEP 140:

‘If a license is required but the application is not one of the types under MPEP § 140(II), the grant of a license is not usually included in the letter of filing receipt.’

In such cases, the processing time can take several weeks. However, for expedited processing:

• A petition for expedited handling under 37 CFR 1.182 can be filed.
• In urgent cases, the license can be granted immediately by telephone.
• The Office of Licensing and Review can grant a license the same day by fax.

It’s advisable to apply for a license well in advance of any planned foreign filing to ensure timely processing.

For more information on foreign filing license, visit: foreign filing license.

How long does a foreign filing license remain valid?

The validity period of a foreign filing license depends on the type of license issued. According to MPEP 140:

“A foreign filing license is not required to file a patent application in another country if the invention was not made in the United States. A license is required if the invention was made in this country and:

• An application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed abroad, or
• No application on the invention has been filed in the United States.”

In essence, a foreign filing license granted as part of the regular patent application process remains valid for six months from the filing date. After six months, no additional license is required. However, if you obtain a petition-based license (e.g., for inventions not yet filed in the U.S.), the license will specify its scope and duration in the grant letter.

For more information on foreign filing license, visit: foreign filing license.

The 6-month rule for foreign filing licenses states that:

• After 6 months from the filing date of a US application, a foreign filing license is no longer required for that subject matter.
• This automatic license occurs unless a Secrecy Order has been imposed on the application.
• The rule is based on 35 U.S.C. 184 and 37 CFR 5.11(e)(2).

As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”

For more information on foreign filing license, visit: foreign filing license.

For more information on USPTO, visit: USPTO.

A petition for a retroactive foreign filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing occurred through error. The petition must include:

1) A listing of each foreign country where the unlicensed patent application was filed
2) The filing dates in each country
3) A verified statement containing:
– An averment that the subject matter was not under a secrecy order and is not currently under a secrecy order
– A showing that the license has been diligently sought after discovery of the proscribed foreign filing
– An explanation of why the material was filed abroad through error without the required license
4) The required fee under 37 CFR 1.17(g)

Secrecy Orders have significant impacts on foreign filing licenses:

• A Secrecy Order prevents the granting of a foreign filing license.
• It overrides the 6-month rule, prohibiting foreign filing even after 6 months.
• Applications under a Secrecy Order cannot be exported or filed in foreign countries.
• Violating a Secrecy Order can result in abandonment of the invention and other penalties.

The MPEP states: “Only the imposition of a Secrecy Order will cause revocation of the authority which arises from 35 U.S.C. 184 to file a foreign application 6 months or later after the date of filing of a corresponding U.S. patent application.”

For more information on Secrecy Orders, refer to MPEP 120.

For more information on foreign filing license, visit: foreign filing license.

For more information on USPTO, visit: USPTO.

If you’ve inadvertently filed a foreign patent application without obtaining a foreign filing license, you can apply for a retroactive license. According to MPEP 140:

‘Petitions for a retroactive license under 35 U.S.C. 184 are decided by the Office of Petitions. The petition must be in the form of a verified statement and should include the following information:’

• A listing of each of the foreign countries in which the unlicensed patent application material was filed
• The dates on which the material was filed in each country
• A verified statement that the subject matter in question was not under a secrecy order at the time it was filed abroad
• A verified statement that the license has been diligently sought after discovery of the proscribed foreign filing
• An explanation of why the material was filed abroad through error without the required license first having been obtained

The petition should be submitted to the USPTO as soon as possible after discovering the error. Include all relevant documentation and be prepared to pay any required fees.

For more information on retroactive foreign filing license, visit: retroactive foreign filing license.

For more information on USPTO, visit: USPTO.

There are several ways to obtain a foreign filing license:

1. File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
2. File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
3. Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).

As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”

For more information on foreign filing license, visit: foreign filing license.

For more information on patent procedure, visit: patent procedure.

For more information on USPTO, visit: USPTO.

Can I obtain a foreign filing license for an invention not yet filed with the USPTO?

Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:

“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”

To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.

For more information on foreign filing license, visit: foreign filing license.

Yes, you can obtain a foreign filing license for a provisional patent application. According to MPEP 140:

‘U.S. provisional applications are considered as pending applications and are subject to the license requirement specified in 35 U.S.C. 184.’

This means that:

• Provisional applications require a foreign filing license just like non-provisional applications.
• The process for obtaining a license is the same as for non-provisional applications.
• If you plan to file a foreign application based on your provisional application within 6 months, you should request a license when filing the provisional or shortly thereafter.

Remember, the license requirement applies to the subject matter, not the type of application.

For more information on foreign filing license, visit: foreign filing license.

For more information on provisional application, visit: provisional application.

Yes, a foreign filing license can be revoked by the USPTO. Key points about revocation include:

• The USPTO can revoke a license through written notification.
• Revocation usually occurs if additional review reveals national security concerns.
• Revocation is effective on the date the notice is mailed.
• Foreign filings made before revocation are generally not affected.
• New foreign filings after revocation are not permitted without a new license.

The MPEP states: “Upon written notification from the USPTO, any foreign filing license required by 37 CFR 5.11(a) may be revoked. Ordinarily, revocation indicates that additional review of the licensed subject matter revealed the need for referral of the application to the appropriate defense agencies.”

For more information on foreign filing license, visit: foreign filing license.

For more information on USPTO, visit: USPTO.

Can a foreign filing license be revoked or modified?

Yes, a foreign filing license can be revoked or modified under certain circumstances. The MPEP 140 provides guidance on this:

Licenses for foreign filing may be revoked or modified upon written notification from the Director. Normally, revocation or modification will only affect applications or other materials not already filed abroad.

Key points about revocation or modification of foreign filing licenses:

• The Director of the USPTO has the authority to revoke or modify licenses.
• Notification of revocation or modification will be provided in writing.
• Generally, the revocation or modification only affects future filings, not those already made abroad.
• In cases of imminent national emergency, revocation may be immediate and may affect filings already made abroad.

If your license is revoked or modified, you should immediately cease any foreign filing activities covered by the license and seek legal counsel to understand the implications and next steps.

For more information on foreign filing license, visit: foreign filing license.

For more information on revocation, visit: revocation.

Yes, a foreign filing license can be denied by the USPTO. According to MPEP 140:

‘If the Director of the USPTO or his or her designee determines that the application contains subject matter that requires a security review under the Invention Secrecy Act (35 U.S.C. 181-188), the petition for license is denied and the applicant is notified in writing.’

Reasons for denial may include:

• National security concerns
• Subject matter falling under the Invention Secrecy Act
• Incomplete or incorrect application for the license

If a license is denied, the applicant will be notified in writing and may have the opportunity to address the issues or appeal the decision.

For more information on foreign filing license, visit: foreign filing license.

Yes, there are certain exceptions to the foreign filing license requirement. According to MPEP 140:

‘A license is not required if the invention was not made in the United States. Also, a license is not required to file an international application in the United States Receiving Office.’

Additionally, the following situations do not require a foreign filing license:

• Filing applications in countries where no security agreement exists with the United States
• Filing a PCT application designating only foreign countries
• Filing a design patent application in a foreign country

However, it’s important to note that these exceptions are subject to specific conditions and may change. Always consult with a patent attorney or the USPTO if you’re unsure about your specific situation.

For more information on USPTO, visit: USPTO.

According to MPEP 150, property rights statements to DOE or NASA can be filed at any time, but they should be kept up-to-date to reflect accurate property rights at the time of application allowance. The MPEP states:

Property rights statements to DOE or NASA may be filed at any time but should be updated if necessary to accurately reflect property rights at the time the application is allowed.

Additionally, the USPTO typically sends an informal request for a property rights statement shortly after filing to applicants whose nonprovisional applications are marked as being of interest to DOE or NASA. While there’s no formal time period set, a response within 45 days is recommended to expedite processing.

For more information on filing deadlines, visit: filing deadlines.

For more information on patent applications, visit: patent applications.

If an invention appears to the USPTO Director to have significant utility in the conduct of aeronautical and space activities, the applicant must file a written statement with the USPTO Director with the patent application or within 30 days after request by the Director.

The statement must be executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any NASA contract, as provided in 51 U.S.C. 20135(d):

“No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (hereafter in this section referred to as the ‘Director’) to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.”

Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy must be reported to the Department of Energy, which will be given access to the applications.

As stated in 37 CFR 1.14(d), “Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).”

Papers related to property rights under the Atomic Energy Act or National Aeronautics and Space Act require special handling. According to MPEP 150:

Any papers pertaining to property rights under section 152 of the Atomic Energy Act, 42 U.S.C. 2182, (DOE), or section 305(c) or the National Aeronautics and Space Act, 42 U.S.C. 2457, (NASA), that have not been associated with the application file, or have not been made of record in the file and processed by the Licensing and Review section, must be sent to the Licensing and Review section immediately.

Key points:

• Papers related to property rights under these acts must be properly associated with the application file
• If not already processed by the Licensing and Review section, they must be sent there immediately
• This ensures proper handling and review of sensitive information related to atomic energy or space activities

For more information on National Aeronautics and Space Act, visit: National Aeronautics and Space Act.

For more information on USPTO procedures, visit: USPTO procedures.

When the USPTO makes a formal request for a property rights statement in accordance with 42 U.S.C. 2182 (DOE) or 51 U.S.C. 20135 (NASA), the applicant has a 30-day statutory period to respond. There is no provision for an extension of this 30-day time period.

As stated in MPEP 150, “If no proper and timely statement is received, the application will be held abandoned and the applicant so notified. Such applications may be revived under the provisions of 37 CFR 1.137.”

Patent applications that appear to disclose, purport to disclose, or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy. The purpose is to allow the DOE access to these applications for review.

As stated in MPEP 150: Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. However, it’s important to note that Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).

For more information on invention disclosure, visit: invention disclosure.

For more information on patent applications, visit: patent applications.

For inventions related to atomic energy, applicants must file a statement under oath with specific information. According to 42 U.S.C. 2182, this statement should include:

• Full facts surrounding the making or conception of the invention
• Whether the invention was made or conceived under any contract or arrangement with the Commission (now DOE)
• Whether the contract involved the expenditure of funds by the Commission

The law states: No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission.

For more information on invention disclosure, visit: invention disclosure.

For more information on patent applications, visit: patent applications.

If an applicant fails to respond to a request for a property rights statement, there can be serious consequences for the patent application. According to MPEP 150:

If no proper and timely statement is received, the application will be held abandoned and the applicant so notified.

The process typically involves:

• An initial informal request (45-Day Letter)
• If no response or if the statement is defective, a formal request is made with a 30-day statutory period for response
• No extensions are available for this 30-day period
• Failure to respond properly results in the application being held abandoned

However, abandoned applications may be revived under the provisions of 37 CFR 1.137, as noted in the case of In re Rutan, 231 USPQ 864 (Comm’r Pat. 1986).

For more information on patent applications, visit: patent applications.

For more information on revival, visit: revival.

For inventions related to aeronautical and space activities, applicants must file a statement with specific information if requested by the USPTO. According to 51 U.S.C. 20135:

No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.

This statement should include:

• Full facts about the circumstances of the invention’s creation
• The relationship, if any, between the invention and work performed under any NASA contract

For more information on invention disclosure, visit: invention disclosure.

For more information on patent applications, visit: patent applications.

The USPTO has a process for handling defective property rights statements submitted in response to DOE or NASA review requests. According to MPEP 150:

If the statement submitted during this period is defective, another letter is sent from Licensing and Review detailing the deficiencies and giving applicant another opportunity to respond during this period of informal correspondence.

The process typically involves:

• Initial review of the submitted statement
• If defects are found, a letter is sent detailing the deficiencies
• The applicant is given another opportunity to respond and correct the statement
• If repeated efforts to correct a defective statement show lack of cooperation, a formal request with a 30-day statutory deadline may be issued

It’s crucial for applicants to address any deficiencies promptly to avoid potential abandonment of their application.

For more information on USPTO procedures, visit: USPTO procedures.

No, provisional applications are not subject to Department of Energy (DOE) or NASA property rights review. According to MPEP 150:

Provisional applications are not subject to DOE or NASA property rights review.

This means that inventors filing provisional applications do not need to submit property rights statements to DOE or NASA at the time of filing. However, it’s important to note that if a nonprovisional application is later filed claiming priority to the provisional application, and if it relates to atomic energy or aeronautical and space activities, it may then be subject to the relevant property rights review process.

According to MPEP 151, the term ‘applicant’ in the context of Atomic Energy Act and NASA Act statements is interpreted as follows:

“The word ‘applicant’ in both of these statutes is construed by the Office to mean the inventor or joint inventors in person, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.”

This means that the statements must typically be signed by the actual inventor(s), assignee, or someone with a significant proprietary interest in the invention. The USPTO considers these individuals to be the most knowledgeable about the circumstances surrounding the invention’s creation.

For more information on applicant definition, visit: applicant definition.

The word “applicant” in the Atomic Energy Act and NASA Act is construed by the USPTO to mean the inventor(s), an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. In the ordinary situation, the statements must be signed by:

• The inventor or joint inventors
• An assignee
• An obligated assignee
• A person who otherwise shows sufficient proprietary interest in the matter

This is consistent with the fact that these parties would be most knowledgeable of the “full facts concerning the circumstances under which such invention was made” (42 U.S.C. 2457) or “full facts surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182).

If inventorship changes after filing a property rights statement, MPEP 151 provides specific guidance:

“If a request under 37 CFR 1.48 for correction of inventorship is granted during pendency of an application in which a property rights statement has been filed, a supplemental statement executed by any added inventor(s) is required and should promptly be filed with Licensing and Review.”

This means that if new inventors are added to the application, they must file a supplemental statement to ensure compliance with the Atomic Energy Act and NASA Act requirements. It’s important to file this supplemental statement promptly to maintain proper documentation.

For more information on patent procedure, visit: patent procedure.

For more information on property rights statement, visit: property rights statement.

The statement regarding work with the Atomic Energy Commission or NASA should be in the form of an oath or declaration. The following is an acceptable format, assuming no government funds or considerations were involved in the invention’s conception or making:

I (We) [Name(s)] citizens of [Country] residing at [Address] declare: That I (we) made and conceived the invention described and claimed in patent application number [Application Number] filed in the United States of America on [Date] titled [Title].

[Include statement regarding employment and/or relevant facts.]

The invention or discovery was not made or conceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.

The invention was not made under nor is there any relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.

The statement must be signed by all the inventors.

If an applicant does not have firsthand knowledge of whether the invention involved work under any contract or arrangement with the Atomic Energy Commission or NASA, but includes such information derived from others:

• The applicant’s statement should identify the source of this information, or
• The applicant’s statement could be accompanied by a supplemental declaration or oath regarding the contractual matters, made by the assignee or another person (like an employee) who has the requisite knowledge

Statements under the Atomic Energy Act and NASA Act must set forth “the full facts” surrounding the conception and making of the invention. According to MPEP 151, these facts should be unique to that invention. The MPEP states:

“The use of form paragraphs or printed forms which set forth only broad generalized statements of fact is not ordinarily regarded as meeting the requirements of these statutes.”

This means that inventors must provide detailed, specific information about their invention’s conception and development.

For more information on invention disclosure, visit: invention disclosure.

When an inventor is unable to provide a statement due to death, incapacitation, or unavailability, MPEP 151 offers alternative solutions:

“When an inventor applicant is deceased or legally incapacitated, or where it is shown to the satisfaction of this Office that he or she refuses to furnish a statement or cannot be reached after diligent efforts, declarations or statements under oath setting forth the information required by the statutes may be accepted from an officer or employee of the assignee who has sufficient knowledge of the facts.”

Additionally, for joint inventions, “Where it is shown that one of the joint inventors is deceased or unavailable, a statement by all of the other inventor(s) may be accepted.” It’s important to note that these alternatives should only be used when the inventor is truly unavailable, not merely for convenience.

For more information on patent procedure, visit: patent procedure.

When an applicant doesn’t have firsthand knowledge about certain aspects of the invention’s relationship to government contracts, MPEP 151 provides guidance:

“In instances where an applicant does not have firsthand knowledge whether the invention involved work under any contract, subcontract, or arrangement with or for the benefit of the Atomic Energy Commission, or had any relationship to any work under any contract of the National Aeronautics and Space Administration, and includes in his or her statement information of this nature derived from others, his or her statement should identify the source of his or her information.”

Alternatively, the MPEP suggests that “the statement by the applicant could be accompanied by a supplemental declaration or oath, as to the contractual matters, by the assignee or other person, e.g., an employee thereof, who has the requisite knowledge.” This ensures transparency and accuracy in the statement.

Proper identification of priority applications is crucial for several reasons:

Proper identification of priority applications is essential to establishing accurate and complete relationships among various patent documents, especially in the context of electronic priority document exchange programs

This means that:

• It ensures accuracy in patent documentation
• It facilitates complete relationships between related patent documents
• It is particularly important for electronic priority document exchange programs

Accurate identification helps maintain the integrity of the patent system and ensures that priority claims are properly recognized and processed.

To learn more:

• priority applications
• patent documentation
• electronic exchange
• patent relationships

The USPTO typically does not send a filing receipt for a Continued Prosecution Application (CPA). This practice is mentioned in MPEP ¶ 2.35, which states:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The reason for this is that a CPA is a continuation of an existing application rather than an entirely new filing. The USPTO communicates the acceptance of the CPA through other means, typically in the first Office action on the CPA. This approach streamlines the process and reduces redundant paperwork.

For more information on USPTO procedures, visit: USPTO procedures.

Amendments to refer to Continued Prosecution Applications (CPAs) as continuation or divisional applications are not allowed because they are unnecessary and can potentially cause confusion. The MPEP ¶ 2.34 explains:

“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”

This means that the CPA itself already serves as the legally required reference to the prior application. Adding additional references through amendments is redundant and could potentially lead to inconsistencies or misinterpretations in the patent record.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on patent law, visit: patent law.

According to MPEP 203.08, information about a patent application’s status can be provided to:

• The applicant
• The applicant’s assignee
• The attorney or agent of record
• Anyone with written authority from one of the above

The MPEP states: “Status information which may be given includes information as to whether the application has been filed, whether the application is awaiting action by the examiner, as well as other matters which do not involve the disclosure of confidential information.”

It’s important to note that the USPTO is prohibited from disclosing certain information to unauthorized parties, such as the date of filing, names of inventors, or specific details about the prosecution of the application.

To learn more:

• patent application status
• confidentiality
• USPTO information disclosure

The USPTO has designated specific offices to handle inquiries from high-level government sources. According to MPEP 203.08(a):

• Office of Policy and International Affairs: Handles inquiries from embassies, the Office of the U.S. Trade Representative, and the Department of State.
• Office of Governmental Affairs: Manages inquiries from Congress and the White House.

These offices are responsible for ensuring that such high-level inquiries are handled appropriately and consistently.

To learn more:

• USPTO
• Office of Policy and International Affairs
• Office of Governmental Affairs
• Official Inquiries

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

For more information on patent law, visit: patent law.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

The United States recognizes the right of priority for patent applications filed in countries that are:

• Parties to the Patent Cooperation Treaty (PCT)
• Members of the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a) – (d) has been recognized. For the most up-to-date list of recognized countries, refer to the WIPO website.

To learn more:

• recognized countries
• priority claim
• PCT
• Paris Convention
• WTO

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The location of the benefit claim reference depends on the filing date of the application:

• For applications filed before September 16, 2012: The reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS).
• For applications filed on or after September 16, 2012: The specific reference must be included in an application data sheet (ADS).

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on application data sheet, visit: application data sheet.

For more information on divisional, visit: divisional.

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

For more information on patent procedure, visit: patent procedure.

For more information on provisional application, visit: provisional application.

The location for filing your petition to restore the right of priority depends on the type of application you have. The MPEP provides guidance:

The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.

Additionally, the MPEP specifies the mailing address for such petitions:

The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Ensure you file the petition in the correct application and send it to the appropriate address to avoid processing delays.

For more information on mailing address, visit: mailing address.

For more information on priority restoration, visit: priority restoration.

The English translation of a non-English provisional application must be filed in the provisional application itself, not in the non-provisional application claiming benefit. According to MPEP ¶ 2.38:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3].”

Additionally, you must confirm in your current application that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

For more information on provisional application, visit: provisional application.

The recommended presentation of foreign application numbers can be found in the WIPO Handbook on Industrial Property Information and Documentation. The MPEP provides specific guidance:

A complete updated list of the recommended presentation of a foreign application number based on the numbering system used by the foreign intellectual property office is maintained by the WIPO and can be found in the online WIPO Handbook on Industrial Property Information and Documentation

To access this information:

• Visit the WIPO website (www.wipo.int/standards/en/)
• Navigate to Part 7: Examples and Industrial Property Offices Practices
• Refer to Part 7.2.1: Presentation of Application Numbers

Additionally, the MPEP mentions a survey of current practices: www.wipo.int/export/sites/www/standards/en/pdf_/07-02-06.pdf

To learn more:

• foreign application numbers
• WIPO handbook
• application number presentation

The USPTO provides additional information about the Priority Document Exchange (PDX) program on its official website. According to the MPEP:

The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx).

This website includes important details such as:

• A list of intellectual property offices participating in the PDX program
• Information necessary for each participating foreign intellectual property office to provide the USPTO with access to foreign applications

Applicants and practitioners are encouraged to visit this resource for the most up-to-date information on the PDX program and its participants.

For those needing information about the former procedures, the MPEP provides guidance: For more information pertaining to practice and procedure under former 37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm). This archived version of the MPEP contains the detailed procedures that were in place before the regulation was deleted.

To learn more:

• former 37 CFR 1.60
• archived procedures
• MPEP 8th Edition

To learn more:

• former 37 CFR 1.60

For those interested in the historical procedures under former 37 CFR 1.60, the MPEP provides guidance: For more information pertaining to practice and procedure under former 37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm). This archived version of the MPEP contains detailed information about the procedures that were in place before the rule change, which may be useful for historical reference or for understanding the processing of applications filed before December 1, 1997.

For comprehensive information about reissue applications, you should refer to MPEP Chapter 1400. As mentioned in MPEP 201.05, “A detailed treatment of reissue applications can be found in MPEP Chapter 1400.” This chapter provides in-depth coverage of various aspects of reissue applications, including:

• Eligibility requirements for filing a reissue application
• Types of defects that can be corrected
• Procedures for filing and prosecuting a reissue application
• Examination guidelines for reissue applications
• Special considerations for broadening reissues

By consulting MPEP Chapter 1400, patent attorneys, examiners, and inventors can gain a thorough understanding of the reissue application process and its requirements.

To learn more:

• reissue application information
• MPEP Chapter 1400
• patent correction resources

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on benefit claims, visit: benefit claims.

For amended patent applications, it’s important to understand the expected timelines and when it’s appropriate to make a status inquiry:

• Examiners are expected to act on amended applications within two months of receiving them.
• A status inquiry is generally not necessary until 5-6 months have passed without a response from the USPTO.
• If six months elapse without a response, you should inquire to avoid potential abandonment.

The MPEP advises: Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the application. Accordingly, a status inquiry is not in order after reply by the attorney until 5 or 6 months have elapsed with no response from the Office. (MPEP 203.08)

It further states: However, in the event that a six month period has elapsed, and no response from the Office is received, applicant should inquire as to the status of the application to avoid potential abandonment.

For making inquiries, the MPEP recommends: Applicants are encouraged to use Patent Center or Private PAIR to make status inquiries.

To learn more:

• amended patent applications
• status inquiry
• Patent Center
• Private PAIR
• application abandonment

You should file a 37 CFR 1.48 request to correct inventorship in a Continued Prosecution Application (CPA) as soon as you realize there’s a need to add or remove an inventor. This should be done concurrently with or shortly after filing the CPA.

The MPEP ¶ 2.33 indicates:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48.

It’s important to file this request promptly to ensure that the correct inventorship is recorded for your application. Failure to do so may result in the inventorship remaining the same as in the prior application, which could potentially affect the validity of your patent if granted.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

You should file a 37 CFR 1.48 request for a Continued Prosecution Application (CPA) whenever you need to add, remove, or change the order of inventors from the original application.

The MPEP ¶ 2.33 indicates: Any request to add an inventor must be in the form of a request under 37 CFR 1.48. This applies even if you’ve identified the new inventor in the CPA filing documents.

It’s best to file the 37 CFR 1.48 request as soon as you realize there’s a need to correct the inventorship. This ensures that the correct inventors are associated with the application throughout the examination process.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

Form Paragraph 2.35 should be used in specific circumstances during the patent examination process. According to the MPEP ¶ 2.35, this form paragraph is to be used:

in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

However, it’s important to note that this form paragraph should not be used in all situations. Specifically:

• It should only be used for design applications, as CPAs are only available for design applications.
• If the request for a CPA in a utility or plant application is improper and has been treated as an RCE (Request for Continued Examination), examiners should use form paragraph 7.42.15 instead.

Examiners should refer to MPEP § 706.07(h) for more information on handling improper CPA requests in utility or plant applications.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on patent examination, visit: patent examination.

An inventor might consider filing a continuation application in several scenarios. The MPEP 201.07 provides guidance on timing:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

Common reasons for filing a continuation include:

• To pursue broader or different claims based on the same disclosure
• To address issues raised in the prosecution of the parent application
• To keep the application pending while exploring commercial opportunities
• To submit new evidence or arguments in support of patentability

It’s important to note that the continuation must be filed before the parent application is patented, abandoned, or otherwise terminated.

For more information on patent strategy, visit: patent strategy.

For more information on USPTO, visit: USPTO.

Patent examiners should use MPEP ¶ 2.06 when they encounter an application that appears to qualify as a continuation-in-part (CIP) but lacks a proper benefit claim. The paragraph itself provides guidance:

This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.

Examiners use this paragraph to notify applicants that their application might be eligible for CIP status and to direct them to the proper procedures for claiming the benefit of the prior application’s filing date if desired.

For more information on patent examination, visit: patent examination.

Patent examiners should use the MPEP ¶ 2.01 form paragraph under specific circumstances. The MPEP provides the following guidance:

Examiner Note: […] 2. This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.

This means examiners should use this paragraph when:

• The application appears to contain subject matter that is independent and distinct from a prior application
• The application seems to qualify as a divisional
• The applicant has not yet properly claimed the benefit of the prior application’s filing date

The form paragraph serves as a prompt for the applicant to properly establish the benefit claim if they intend the application to be a divisional.

For more information on Divisional application, visit: Divisional application.

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:

• Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
• Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
• Sixteen months from the filing date of the prior application

The MPEP states: If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of: (1) four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f); (2) four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage; or (3) sixteen months from the filing date of the prior application.

To learn more:

• benefit claim
• time limit
• national stage application
• international application
• 35 U.S.C. 371

To learn more:

• 35 U.S.C. 371

The USPTO may require earlier submission of priority documents in certain circumstances. According to 37 CFR 1.55(g)(2), these circumstances include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

In these cases, the applicant may be required to submit the priority claim and certified copy of the foreign application earlier than the general deadline of the patent grant date.

To learn more:

• priority documents
• early submission
• USPTO requirements
• patent examination

The USPTO may require earlier filing of priority claims and certified copies in certain situations. According to 37 CFR 1.55(g)(2), these situations include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

The MPEP explains that these requirements allow the USPTO to address priority issues promptly when they are relevant to ongoing proceedings or examination.

To learn more:

• priority claim timing
• certified copy filing
• USPTO requirements
• interference proceedings

A separate written request is required in specific situations, as outlined in MPEP 215.01:

A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired.

Additionally, a separate request is needed when:

• The foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating office.
• The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

To learn more:

• PDX
• Written Requests
• Foreign Applications
• Patent Procedure

A separate written request for PDX retrieval is needed in two specific situations:

1. When the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating office after the foreign priority has been claimed, as long as the time period set in 37 CFR 1.55 has not expired.
2. When the foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating foreign intellectual property office.

The MPEP provides Form PTO/SB/38 for such requests:

Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

A reissue application is necessary to perfect a foreign priority claim in the following situations:

1. When the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
2. When the requirements of 37 CFR 1.55 are not met.
3. When the correction sought would require further examination.

The MPEP provides an example: Further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.

To learn more:

• reissue application
• foreign priority claim
• patent correction
• AIA provisions

A petition is required to correct a benefit claim in the following situations:

• When the benefit claim is filed after the required time period set forth in 37 CFR 1.78.
• When the benefit claim was included elsewhere in the application (e.g., in an oath or declaration) but was not recognized by the Office as shown by its absence on the first filing receipt, and the correction is sought after the expiration of the time period set in 37 CFR 1.78.

The MPEP states: If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on the first filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the correction is sought after expiration of the time period set in 37 CFR 1.78.

However, a petition is not required for certain corrections, such as changing the relationship of the applications or changing the filing date of a prior-filed application, as long as these corrections are made within the original time period.

To learn more:

• benefit claim
• petition
• correction
• 37 CFR 1.78
• filing receipt

To learn more:

• 37 CFR 1.78

A divisional application is often filed in response to a restriction requirement made by the patent examiner. As stated in the MPEP:

A divisional application is often filed as a result of a restriction requirement made by the examiner.

When an examiner determines that an application contains multiple independent and distinct inventions, they may issue a restriction requirement. The applicant can then elect one invention to pursue in the original application and file a divisional application to pursue the non-elected invention(s).

To learn more:

• divisional application
• restriction requirement
• patent examination procedure

A Continued Prosecution Application (CPA) is acceptable when it meets the requirements set forth in 37 CFR 1.53(d). According to MPEP § 201, the examiner will use specific language to indicate acceptance:

The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.

It’s important to note that CPAs are now only available for design patent applications. For utility and plant applications, a Request for Continued Examination (RCE) would be used instead.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on patent examination, visit: patent examination.

The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application.

Key points about the retrieval timing:

• The first attempt is typically made when the application is assigned to an examiner.
• Retrieval occurs after the Office of Patent Application Processing completes its review.
• Applicants should check the Private PAIR system to confirm successful retrieval.
• A successful retrieval usually takes about one week to complete.

To learn more:

• PDX
• USPTO Procedures
• Foreign Applications
• Retrieval Timing

The status of an application as ‘allowed’ has a specific timeframe. According to the MPEP:

“Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue ( 37 CFR 1.313 ), or becomes abandoned for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 ).”

In other words, the ‘allowed’ status begins when the notice of allowance is sent and typically ends when the patent is issued. However, this status can be terminated if the application is withdrawn from issue or becomes abandoned due to non-payment of required fees.

To learn more:

• allowed application status
• notice of allowance
• patent issuance
• application withdrawal
• application abandonment

A patent application stops being considered ‘new’ when it receives its first action from the examiner. According to MPEP 203.01:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This implies that once the examiner issues any official communication or action on the merits of the application, such as a non-final rejection or a notice of allowance, the application is no longer considered ‘new’ in the patent examination process.

To learn more:

• new application
• patent examination
• examiner action
• application status

The provisions of 35 U.S.C. 386(a) and (b) became effective for certain types of applications filed on or after May 13, 2015. According to MPEP 213.07:

The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).

This means that the right of priority under these sections is only applicable to:

• Nonprovisional applications
• International applications (PCT)
• International design applications

These applications must be filed on or after May 13, 2015, to be eligible for the priority rights under 35 U.S.C. 386(a) and (b). The same applies to patents issued from such applications.

For more information on 35 U.S.C. 386, visit: 35 U.S.C. 386.

For more information on effective date, visit: effective date.

For more information on nonprovisional application, visit: nonprovisional application.

A continuation application can be filed at various times during the patent application process. According to MPEP 201.07:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

This means you can file a continuation application:

• Before the parent application is granted a patent
• Before the parent application is abandoned
• Before proceedings on the parent application are terminated

However, for Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), there are additional timing restrictions:

A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

For more information on continuation application, visit: continuation application.

For more information on patent procedure, visit: patent procedure.

Benefit under 35 U.S.C. 386(c) for international design applications can only be claimed in specific types of applications filed on or after May 13, 2015. The MPEP states:

37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

This means that applications filed before May 13, 2015, cannot claim the benefit of an international design application under 35 U.S.C. 386(c). It’s important for applicants to be aware of this date restriction when considering benefit claims for their patent applications.

To learn more:

• 35 U.S.C. 386(c)
• benefit claim
• international design application
• filing date
• nonprovisional application

To learn more:

• 35 U.S.C. 386(c)

The ability to claim benefit under 35 U.S.C. 386(c) for international design applications is subject to specific timing requirements. According to MPEP § 211.01(d):

37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

This means that to claim the benefit of an international design application, the claiming application must have been filed on or after May 13, 2015. This date is significant as it marks the implementation of certain provisions of the Patent Law Treaties Implementation Act of 2012.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on filing date requirements, visit: filing date requirements.

A Request to Delete a Named Inventor can be filed at two specific times for a Continued Prosecution Application (CPA):

1. With the CPA filing: The request can be submitted along with the CPA when it is initially filed.
2. After the CPA filing: If the request is made after the CPA has been filed, it must follow a different procedure.

The MPEP ¶ 2.32 states:

Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.

This means that post-filing requests require additional documentation and must comply with the regulations for correction of inventorship.

A reissue application can be filed when an unexpired patent is found to be defective. The key criteria are:

• The original patent must still be in force (unexpired)
• There must be a defect in the patent that needs correction

It’s important to note that the reissue process is not for extending the term of a patent, but for correcting issues in the existing patent. For more detailed information on the timing and requirements, refer to MPEP Chapter 1400, which provides a comprehensive treatment of reissue applications.

To learn more:

• reissue application timing
• unexpired patent
• patent defect correction