Patent Law FAQ

According to MPEP 102, accessing unpublished patent applications requires specific procedures: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For more information on unpublished applications, visit: unpublished applications.

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))

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, 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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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)

The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected after the patent is granted using a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.

For applications filed under 35 U.S.C. 111(a) (other than design applications), a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim must also be filed with the certificate of correction. For all applications, a grantable petition under 37 CFR 1.55(f) or (g) must also be filed with the certificate of correction unless the priority claim was timely made but a certified copy was not yet in the file. See MPEP 215.03.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

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1. The application must have been filed on or after September 21, 2004

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2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

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3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

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4. The omitted portion must be completely contained in the prior-filed application

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5. An amendment to include the omitted portion must be filed within a time period set by the Office

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6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

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7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

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8. An English translation of any non-English prior-filed application must be supplied

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9. The location of the omitted portion in the prior-filed application must be identified

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

To file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include:

1. The priority claim (if not previously submitted)
2. A certified copy of the foreign application (unless previously submitted or an exception applies)
3. The petition fee set forth in 37 CFR 1.17(m)
4. A statement that the entire delay was unintentional

MPEP 214.02 states: “If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

Yes, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

To file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include:

1. The priority claim (if not previously submitted)
2. A certified copy of the foreign application (unless previously submitted or an exception applies)
3. The petition fee set forth in 37 CFR 1.17(m)
4. A statement that the entire delay was unintentional

MPEP 214.02 states: “If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected after the patent is granted using a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.

For applications filed under 35 U.S.C. 111(a) (other than design applications), a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim must also be filed with the certificate of correction. For all applications, a grantable petition under 37 CFR 1.55(f) or (g) must also be filed with the certificate of correction unless the priority claim was timely made but a certified copy was not yet in the file. See MPEP 215.03.

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

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1. The application must have been filed on or after September 21, 2004

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2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

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3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

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4. The omitted portion must be completely contained in the prior-filed application

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5. An amendment to include the omitted portion must be filed within a time period set by the Office

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6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

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7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

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8. An English translation of any non-English prior-filed application must be supplied

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9. The location of the omitted portion in the prior-filed application must be identified

An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:

1. The fee set forth in § 1.17(g)
2. A showing that the person has sufficient proprietary interest in the matter
3. A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties

This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance:

“Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.” (MPEP 313)

To petition:

1. Submit the document to the Office of Petitions
2. Include a petition under 37 CFR 1.181
3. Provide justification for why the document should be recorded

An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:

1. The fee set forth in § 1.17(g)
2. A showing that the person has sufficient proprietary interest in the matter
3. A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties

This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:

• Be filed promptly after becoming aware of the discrepancy
• Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
• Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”

The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

An applicant can request review of a refusal to accord a filing date by filing a petition. The MPEP states:

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.

An applicant can request review of a refusal to accord a filing date by filing a petition. The MPEP states:

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:

• Be filed promptly after becoming aware of the discrepancy
• Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
• Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”

The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.

The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected after the patent is granted using a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.

For applications filed under 35 U.S.C. 111(a) (other than design applications), a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim must also be filed with the certificate of correction. For all applications, a grantable petition under 37 CFR 1.55(f) or (g) must also be filed with the certificate of correction unless the priority claim was timely made but a certified copy was not yet in the file. See MPEP 215.03.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:

• Be filed promptly after becoming aware of the discrepancy
• Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
• Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”

The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.

An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:

1. The fee set forth in § 1.17(g)
2. A showing that the person has sufficient proprietary interest in the matter
3. A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties

This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

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.

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

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1. The application must have been filed on or after September 21, 2004

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2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

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3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

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4. The omitted portion must be completely contained in the prior-filed application

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5. An amendment to include the omitted portion must be filed within a time period set by the Office

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6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

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7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

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8. An English translation of any non-English prior-filed application must be supplied

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9. The location of the omitted portion in the prior-filed application must be identified

If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance:

“Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.” (MPEP 313)

To petition:

1. Submit the document to the Office of Petitions
2. Include a petition under 37 CFR 1.181
3. Provide justification for why the document should be recorded

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

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)

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.

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

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 file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include:

1. The priority claim (if not previously submitted)
2. A certified copy of the foreign application (unless previously submitted or an exception applies)
3. The petition fee set forth in 37 CFR 1.17(m)
4. A statement that the entire delay was unintentional

MPEP 214.02 states: “If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”

An applicant can request review of a refusal to accord a filing date by filing a petition. The MPEP states:

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

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, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.

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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The certified copy of the foreign application must be filed before the patent is granted. If the certified copy is filed after payment of the issue fee but prior to the date of grant, the priority claim will be placed in the file record but the patent will not include the priority claim unless corrected after the patent is granted using a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.

For applications filed under 35 U.S.C. 111(a) (other than design applications), a petition under 37 CFR 1.55(e) to accept an unintentionally delayed priority claim must also be filed with the certificate of correction. For all applications, a grantable petition under 37 CFR 1.55(f) or (g) must also be filed with the certificate of correction unless the priority claim was timely made but a certified copy was not yet in the file. See MPEP 215.03.

The reference to the prior-filed application to claim benefit under 35 U.S.C. 120 or 119(e) must be submitted within the following time periods under 37 CFR 1.78:

• For an application filed under 35 U.S.C. 111(a), the later of four months from the filing date or sixteen months from the filing date of the prior-filed application
• For a national stage application under 35 U.S.C. 371, the later of four months from national stage commencement under 35 U.S.C. 371(b) or (f), four months from initial national stage submission, or sixteen months from the filing date of the prior-filed application

Failure to timely submit the reference is considered a waiver of any benefit claim. A petition and fee would be required to accept a delayed submission. See MPEP 211.04.

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:

• Be filed promptly after becoming aware of the discrepancy
• Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
• Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”

The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.

An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:

1. The fee set forth in § 1.17(g)
2. A showing that the person has sufficient proprietary interest in the matter
3. A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties

This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

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.

If you fail to make a timely priority claim or submit a certified copy of the foreign application within the required time period, the following may occur:

• The right of priority may be considered waived
• The effective filing date of your application may be the actual U.S. filing date, not the foreign filing date
• Intervening prior art may be applicable against your application

However, 37 CFR 1.55(e) provides for acceptance of a delayed priority claim if:

• The claim is filed within the pendency of the application
• A petition is filed with the delayed claim
• The delay was unintentional
• The required petition fee is paid

Similarly, 37 CFR 1.55(f) allows for late submission of a certified copy with a petition showing good and sufficient cause for the delay and payment of a fee. It’s always best to make priority claims and submit certified copies timely to avoid potential issues.

The following conditions and requirements need to be met to add omitted material to an application under 37 CFR 1.57(b):n

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1. The application must have been filed on or after September 21, 2004

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2. All or a portion of the specification or drawing(s) must have been inadvertently omitted

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3. A priority claim under 37 CFR 1.55 or benefit claim under 37 CFR 1.78 must have been present on the filing date

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4. The omitted portion must be completely contained in the prior-filed application

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5. An amendment to include the omitted portion must be filed within a time period set by the Office

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6. If not otherwise entitled to a filing date, a petition under 37 CFR 1.53(e) with the fee must also be filed

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7. A copy of the prior-filed application must be supplied, except where the prior application was filed under 35 U.S.C. 111

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8. An English translation of any non-English prior-filed application must be supplied

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9. The location of the omitted portion in the prior-filed application must be identified

If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance:

“Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.” (MPEP 313)

To petition:

1. Submit the document to the Office of Petitions
2. Include a petition under 37 CFR 1.181
3. Provide justification for why the document should be recorded

Failure to timely submit the reference to the prior-filed application within the time periods specified in 37 CFR 1.78 is considered a waiver of any benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application. See 37 CFR 1.78(d)(3)(iii). The time periods are not extendable.

If the reference to the prior-filed application is submitted after the time period provided by 37 CFR 1.78, a petition and the petition fee under 37 CFR 1.17(m) would be required to accept the delayed claim. The petition must be accompanied by:

• The reference required by 35 U.S.C. 120 and 37 CFR 1.78 to the prior-filed application
• The petition fee
• A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

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.

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

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 file an unintentionally delayed foreign priority claim, you must submit a petition under 37 CFR 1.55(e). The petition must include:

1. The priority claim (if not previously submitted)
2. A certified copy of the foreign application (unless previously submitted or an exception applies)
3. The petition fee set forth in 37 CFR 1.17(m)
4. A statement that the entire delay was unintentional

MPEP 214.02 states: “If a claim for foreign priority is presented after the time period set in 37 CFR 1.55, the claim may be accepted if it is accompanied by a grantable petition to accept the unintentionally delayed claim for priority.”

An applicant can request review of a refusal to accord a filing date by filing a petition. The MPEP states:

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.

If a claim for foreign priority is not presented within the required time period under 37 CFR 1.55, it is considered waived. However, the claim may be accepted if the priority claim was unintentionally delayed.

To file a petition for an unintentionally delayed priority claim, the applicant must submit:

1. The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet, identifying the foreign application to which priority is claimed;
2. A certified copy of the foreign application, unless previously submitted or an exception applies;
3. The petition fee set in 37 CFR 1.17(m); and
4. A statement that the entire delay between the date the priority claim was due and the date it was filed was unintentional.

The Director may require additional information if there is a question whether the delay was unintentional. See 37 CFR 1.55(e).

Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.

37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”

To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional

The USPTO may require additional information to determine if the delay was truly unintentional.

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, it is possible to restore the right of priority if you miss the 12-month filing deadline (6 months for design applications). As provided in 37 CFR 1.55(c), if the subsequent application is filed within two months from the expiration of the priority period, the right of priority may be restored upon petition. The petition must include:

• The priority claim (unless previously submitted)
• The petition fee
• A statement that the delay in filing was unintentional

The Director may require additional information where there is a question whether the delay was unintentional. Note that while this allows for a valid priority claim, it does not overcome potential prior art issues under pre-AIA 35 U.S.C. 102(b) or (d) in applications subject to pre-AIA law.