Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 101-General (1)
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.
MPEP 102-Information as to Status of an Application (1)
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.
MPEP 103-Right of Public To Inspect Patent Files and Some Application Files (2)
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.
Access to pending unpublished patent applications is generally restricted.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).
MPEP 104-Power to Inspect Application (1)
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:
- The applicant
- A patent practitioner of record
- The assignee or an assignee of an undivided part interest
- The inventor or a joint inventor
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
The Office docket plays a crucial role in determining the status of a patent application. MPEP 203.05 refers to the Office docket when defining abandoned applications:
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications
The Office docket is essentially the official record of pending patent applications at the USPTO. When an application is removed from this docket, it is no longer considered active or pending. This removal can occur for various reasons, including formal abandonment, applicant inaction, failure to pay fees, or expiration of statutory periods. Therefore, the status of an application on the Office docket is a key indicator of whether it is still being actively prosecuted or has been abandoned.
MPEP 203 - Status of Applications (1)
The Office docket plays a crucial role in determining the status of a patent application. MPEP 203.05 refers to the Office docket when defining abandoned applications:
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications
The Office docket is essentially the official record of pending patent applications at the USPTO. When an application is removed from this docket, it is no longer considered active or pending. This removal can occur for various reasons, including formal abandonment, applicant inaction, failure to pay fees, or expiration of statutory periods. Therefore, the status of an application on the Office docket is a key indicator of whether it is still being actively prosecuted or has been abandoned.
MPEP 300 - Ownership and Assignment (2)
The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:
‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’
For applications that are not open to the public, the process is more restricted:
‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’
The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.
The accessibility of assignment records for pending patent applications depends on whether the application has been published. According to MPEP 301.01:
- For published patent applications, assignment records are publicly available.
- For unpublished pending applications, assignment records are not open to public inspection.
The MPEP states: “Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.”
For unpublished pending applications, access to assignment information requires proper authorization. As per the MPEP:
“For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D).”
To learn more:
MPEP 301-Ownership/Assignability of Patents and Applications (1)
The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:
‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’
For applications that are not open to the public, the process is more restricted:
‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’
The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.
MPEP 400 - Representative of Applicant or Owner (5)
What limited recognition is granted to suspended or excluded practitioners?
Suspended or excluded practitioners are granted limited recognition to handle specific tasks related to pending applications. According to MPEP 407:
“The suspended or excluded practitioner will be granted limited recognition for a period of thirty (30) days, during which time the practitioner may conclude work on behalf of a client on any matters pending before the Office.”
This limited recognition allows the practitioner to:
- Conclude or withdraw from representation in pending proceedings
- Receive and forward correspondence
- Make appropriate filings to protect the client’s rights
However, this recognition is strictly limited to these activities and does not allow the practitioner to engage in new patent prosecution work.
For more information on pending applications, visit: pending applications.
What happens to pending patent applications when a practitioner is suspended or excluded?
When a patent practitioner is suspended or excluded, the Office of Enrollment and Discipline (OED) Director must review all pending patent applications to determine if immediate action is necessary. According to MPEP 407:
“The OED Director will review all pending applications, in which the suspended or excluded practitioner is the attorney or agent of record, and notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner.”
This process ensures that applicants are aware of their practitioner’s status and can take appropriate action to protect their patent applications.
For more information on pending applications, visit: pending applications.
When a patent practitioner dies, the MPEP 406 outlines the following procedure:
- The Office will notify the applicant of the death of the practitioner.
- The applicant must appoint a new registered patent practitioner or file a change of correspondence address.
- This must be done within the time period set in the notice, which is usually 3 months.
- If no action is taken, the application may be deemed abandoned.
As stated in the MPEP: “If notification of the death of the practitioner is received by the Office, the Office will notify the applicant of the death and the need to appoint a new registered patent practitioner or file a change of correspondence address.”
For more information on patent practitioner death, visit: patent practitioner death.
For more information on pending applications, visit: pending applications.
For more information on USPTO notification, visit: USPTO notification.
When a power of attorney is revoked, it affects pending applications as follows:
- The revocation is effective upon receipt in the USPTO.
- It applies to all pending applications in which the attorney or agent was appointed, unless specifically limited.
- The Office will not communicate further with the revoked attorney/agent.
- The applicant must appoint a new representative or correspond directly with the Office.
As stated in MPEP 402.05: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ This means the revocation can occur at any point during the patent application process.
To learn more:
How does attorney withdrawal affect pending patent applications?
When an attorney withdraws from representation in a pending patent application, it can have several implications:
- The applicant becomes responsible for prosecuting the application.
- Official correspondence will be sent directly to the applicant.
- Deadlines and response periods remain in effect.
- The applicant may need to find new representation quickly.
According to MPEP 402.06:
“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”
It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.
To learn more:
MPEP 406 - Death of Patent Practitioner (1)
When a patent practitioner dies, the MPEP 406 outlines the following procedure:
- The Office will notify the applicant of the death of the practitioner.
- The applicant must appoint a new registered patent practitioner or file a change of correspondence address.
- This must be done within the time period set in the notice, which is usually 3 months.
- If no action is taken, the application may be deemed abandoned.
As stated in the MPEP: “If notification of the death of the practitioner is received by the Office, the Office will notify the applicant of the death and the need to appoint a new registered patent practitioner or file a change of correspondence address.”
For more information on patent practitioner death, visit: patent practitioner death.
For more information on pending applications, visit: pending applications.
For more information on USPTO notification, visit: USPTO notification.
MPEP 407 - Suspended or Excluded Patent Practitioner (2)
What limited recognition is granted to suspended or excluded practitioners?
Suspended or excluded practitioners are granted limited recognition to handle specific tasks related to pending applications. According to MPEP 407:
“The suspended or excluded practitioner will be granted limited recognition for a period of thirty (30) days, during which time the practitioner may conclude work on behalf of a client on any matters pending before the Office.”
This limited recognition allows the practitioner to:
- Conclude or withdraw from representation in pending proceedings
- Receive and forward correspondence
- Make appropriate filings to protect the client’s rights
However, this recognition is strictly limited to these activities and does not allow the practitioner to engage in new patent prosecution work.
For more information on pending applications, visit: pending applications.
What happens to pending patent applications when a practitioner is suspended or excluded?
When a patent practitioner is suspended or excluded, the Office of Enrollment and Discipline (OED) Director must review all pending patent applications to determine if immediate action is necessary. According to MPEP 407:
“The OED Director will review all pending applications, in which the suspended or excluded practitioner is the attorney or agent of record, and notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner.”
This process ensures that applicants are aware of their practitioner’s status and can take appropriate action to protect their patent applications.
For more information on pending applications, visit: pending applications.
Patent Examining Procedure (1)
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.
Patent Law (14)
The printing of U.S. patent application numbers on a patent depends on how they are submitted and considered by the examiner. The MPEP states:
If a U.S. patent application number is listed on a PTO/SB/08 form or its equivalent and the examiner considers the information and initials the form, the application number will be printed on the patent.
However, applicants should be cautious about disclosing pending application numbers:
Applicants may wish to list U.S. patent application numbers on other than a form PTO/SB/08 format to avoid the application numbers of pending applications being published on the patent.
This guidance allows applicants to control whether pending application numbers are made public through the patent printing process.
To learn more:
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:
- The applicant
- A patent practitioner of record
- The assignee or an assignee of an undivided part interest
- The inventor or a joint inventor
What limited recognition is granted to suspended or excluded practitioners?
Suspended or excluded practitioners are granted limited recognition to handle specific tasks related to pending applications. According to MPEP 407:
“The suspended or excluded practitioner will be granted limited recognition for a period of thirty (30) days, during which time the practitioner may conclude work on behalf of a client on any matters pending before the Office.”
This limited recognition allows the practitioner to:
- Conclude or withdraw from representation in pending proceedings
- Receive and forward correspondence
- Make appropriate filings to protect the client’s rights
However, this recognition is strictly limited to these activities and does not allow the practitioner to engage in new patent prosecution work.
For more information on pending applications, visit: pending applications.
The Office docket plays a crucial role in determining the status of a patent application. MPEP 203.05 refers to the Office docket when defining abandoned applications:
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications
The Office docket is essentially the official record of pending patent applications at the USPTO. When an application is removed from this docket, it is no longer considered active or pending. This removal can occur for various reasons, including formal abandonment, applicant inaction, failure to pay fees, or expiration of statutory periods. Therefore, the status of an application on the Office docket is a key indicator of whether it is still being actively prosecuted or has been abandoned.
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.
What happens to pending patent applications when a practitioner is suspended or excluded?
When a patent practitioner is suspended or excluded, the Office of Enrollment and Discipline (OED) Director must review all pending patent applications to determine if immediate action is necessary. According to MPEP 407:
“The OED Director will review all pending applications, in which the suspended or excluded practitioner is the attorney or agent of record, and notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner.”
This process ensures that applicants are aware of their practitioner’s status and can take appropriate action to protect their patent applications.
For more information on pending applications, visit: pending applications.
When a patent practitioner dies, the MPEP 406 outlines the following procedure:
- The Office will notify the applicant of the death of the practitioner.
- The applicant must appoint a new registered patent practitioner or file a change of correspondence address.
- This must be done within the time period set in the notice, which is usually 3 months.
- If no action is taken, the application may be deemed abandoned.
As stated in the MPEP: “If notification of the death of the practitioner is received by the Office, the Office will notify the applicant of the death and the need to appoint a new registered patent practitioner or file a change of correspondence address.”
For more information on patent practitioner death, visit: patent practitioner death.
For more information on pending applications, visit: pending applications.
For more information on USPTO notification, visit: USPTO notification.
How should pending U.S. patent applications be listed in an IDS?
When listing pending U.S. patent applications in an Information Disclosure Statement (IDS), applicants must provide specific information to ensure proper identification. According to MPEP 609.04(a):
“Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.”
Additionally, the MPEP states:
“Where the application is cited only in a pending U.S. application, the cited application should be identified by application number (application number without series code) or patent application publication number, if applicable.”
It’s important to note that:
- The series code (e.g., 08/, 09/, 10/, etc.) should not be included when citing a pending U.S. application.
- If a patent application publication exists for the pending application, you may include that number instead of or in addition to the application number.
- Providing accurate and complete information helps examiners efficiently locate and consider the cited applications during the examination process.
To learn more:
To learn more:
When a power of attorney is revoked, it affects pending applications as follows:
- The revocation is effective upon receipt in the USPTO.
- It applies to all pending applications in which the attorney or agent was appointed, unless specifically limited.
- The Office will not communicate further with the revoked attorney/agent.
- The applicant must appoint a new representative or correspond directly with the Office.
As stated in MPEP 402.05: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ This means the revocation can occur at any point during the patent application process.
To learn more:
How does attorney withdrawal affect pending patent applications?
When an attorney withdraws from representation in a pending patent application, it can have several implications:
- The applicant becomes responsible for prosecuting the application.
- Official correspondence will be sent directly to the applicant.
- Deadlines and response periods remain in effect.
- The applicant may need to find new representation quickly.
According to MPEP 402.06:
“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”
It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.
To learn more:
The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:
‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’
For applications that are not open to the public, the process is more restricted:
‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’
The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.
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.
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).
The accessibility of assignment records for pending patent applications depends on whether the application has been published. According to MPEP 301.01:
- For published patent applications, assignment records are publicly available.
- For unpublished pending applications, assignment records are not open to public inspection.
The MPEP states: “Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.”
For unpublished pending applications, access to assignment information requires proper authorization. As per the MPEP:
“For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D).”
To learn more:
Patent Procedure (12)
The printing of U.S. patent application numbers on a patent depends on how they are submitted and considered by the examiner. The MPEP states:
If a U.S. patent application number is listed on a PTO/SB/08 form or its equivalent and the examiner considers the information and initials the form, the application number will be printed on the patent.
However, applicants should be cautious about disclosing pending application numbers:
Applicants may wish to list U.S. patent application numbers on other than a form PTO/SB/08 format to avoid the application numbers of pending applications being published on the patent.
This guidance allows applicants to control whether pending application numbers are made public through the patent printing process.
To learn more:
What limited recognition is granted to suspended or excluded practitioners?
Suspended or excluded practitioners are granted limited recognition to handle specific tasks related to pending applications. According to MPEP 407:
“The suspended or excluded practitioner will be granted limited recognition for a period of thirty (30) days, during which time the practitioner may conclude work on behalf of a client on any matters pending before the Office.”
This limited recognition allows the practitioner to:
- Conclude or withdraw from representation in pending proceedings
- Receive and forward correspondence
- Make appropriate filings to protect the client’s rights
However, this recognition is strictly limited to these activities and does not allow the practitioner to engage in new patent prosecution work.
For more information on pending applications, visit: pending applications.
The Office docket plays a crucial role in determining the status of a patent application. MPEP 203.05 refers to the Office docket when defining abandoned applications:
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications
The Office docket is essentially the official record of pending patent applications at the USPTO. When an application is removed from this docket, it is no longer considered active or pending. This removal can occur for various reasons, including formal abandonment, applicant inaction, failure to pay fees, or expiration of statutory periods. Therefore, the status of an application on the Office docket is a key indicator of whether it is still being actively prosecuted or has been abandoned.
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.
What happens to pending patent applications when a practitioner is suspended or excluded?
When a patent practitioner is suspended or excluded, the Office of Enrollment and Discipline (OED) Director must review all pending patent applications to determine if immediate action is necessary. According to MPEP 407:
“The OED Director will review all pending applications, in which the suspended or excluded practitioner is the attorney or agent of record, and notify the applicant of the suspension or exclusion and of the limited recognition of the practitioner.”
This process ensures that applicants are aware of their practitioner’s status and can take appropriate action to protect their patent applications.
For more information on pending applications, visit: pending applications.
When a patent practitioner dies, the MPEP 406 outlines the following procedure:
- The Office will notify the applicant of the death of the practitioner.
- The applicant must appoint a new registered patent practitioner or file a change of correspondence address.
- This must be done within the time period set in the notice, which is usually 3 months.
- If no action is taken, the application may be deemed abandoned.
As stated in the MPEP: “If notification of the death of the practitioner is received by the Office, the Office will notify the applicant of the death and the need to appoint a new registered patent practitioner or file a change of correspondence address.”
For more information on patent practitioner death, visit: patent practitioner death.
For more information on pending applications, visit: pending applications.
For more information on USPTO notification, visit: USPTO notification.
How should pending U.S. patent applications be listed in an IDS?
When listing pending U.S. patent applications in an Information Disclosure Statement (IDS), applicants must provide specific information to ensure proper identification. According to MPEP 609.04(a):
“Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.”
Additionally, the MPEP states:
“Where the application is cited only in a pending U.S. application, the cited application should be identified by application number (application number without series code) or patent application publication number, if applicable.”
It’s important to note that:
- The series code (e.g., 08/, 09/, 10/, etc.) should not be included when citing a pending U.S. application.
- If a patent application publication exists for the pending application, you may include that number instead of or in addition to the application number.
- Providing accurate and complete information helps examiners efficiently locate and consider the cited applications during the examination process.
To learn more:
To learn more:
When a power of attorney is revoked, it affects pending applications as follows:
- The revocation is effective upon receipt in the USPTO.
- It applies to all pending applications in which the attorney or agent was appointed, unless specifically limited.
- The Office will not communicate further with the revoked attorney/agent.
- The applicant must appoint a new representative or correspond directly with the Office.
As stated in MPEP 402.05: ‘A power of attorney may be revoked at any stage in the proceedings of a case.’ This means the revocation can occur at any point during the patent application process.
To learn more:
How does attorney withdrawal affect pending patent applications?
When an attorney withdraws from representation in a pending patent application, it can have several implications:
- The applicant becomes responsible for prosecuting the application.
- Official correspondence will be sent directly to the applicant.
- Deadlines and response periods remain in effect.
- The applicant may need to find new representation quickly.
According to MPEP 402.06:
“Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed.”
It’s important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.
To learn more:
The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:
‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’
For applications that are not open to the public, the process is more restricted:
‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’
The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.
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).
The accessibility of assignment records for pending patent applications depends on whether the application has been published. According to MPEP 301.01:
- For published patent applications, assignment records are publicly available.
- For unpublished pending applications, assignment records are not open to public inspection.
The MPEP states: “Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.”
For unpublished pending applications, access to assignment information requires proper authorization. As per the MPEP:
“For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D).”
To learn more: