What is a nonpublication request for a patent application?
A nonpublication request is a formal request made by an applicant to prevent the U.S. Patent and Trademark Office (USPTO) from publishing their patent application. This request is based on 35 U.S.C. 122(b)(2)(B)(i), which states: “If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will…
Read MoreCan the USPTO independently re-open prosecution of a pending application?
Yes, the USPTO retains the authority to independently re-open prosecution of a pending application, despite the limitations on third-party submissions. This authority is not affected by the provisions of 35 U.S.C. 122(c) and (e). The MPEP clarifies: “The provisions of 35 U.S.C. 122(c) and (e) limit a third party’s ability to protest, oppose the grant…
Read MoreWhat are the main provisions for third-party submissions in patent applications?
The MPEP outlines two main provisions for third-party submissions in patent applications: 35 U.S.C. 122(c): This provision prohibits protests or pre-issuance opposition after publication of an application without the applicant’s express written consent. It is implemented by 37 CFR 1.291. 35 U.S.C. 122(e): This provision allows third parties to submit printed publications relevant to the…
Read MoreHow can I request a confidentiality waiver under 35 U.S.C. 122?
Requests for confidentiality waivers under 35 U.S.C. 122 are handled by the General Counsel of the USPTO. According to MPEP 1002.02(k)(1), these requests are specifically listed as matters decided by the General Counsel. To request a confidentiality waiver: Submit a written request to the USPTO General Counsel’s office Clearly state the reasons for requesting the…
Read MoreHow can I request nonpublication of my patent application?
To request nonpublication of your patent application, you can use Form PTO/SB/35, “Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i)“. This form should be submitted when filing your application. The MPEP states: “Form PTO/SB/35, “Nonpublication Request Under 35 U.S.C. 122(b)(2)(B)(i),” may be used by applicant for filing a request for nonpublication and the certification under 35 U.S.C.…
Read MoreHow are materials submitted under MPEP § 724.02 treated in applications covered by 35 U.S.C. 122?
Materials submitted under MPEP § 724.02 in applications covered by 35 U.S.C. 122 are treated as follows: The materials are kept in a sealed envelope marked “Not Open To The Public”. They are not publicly available until a determination is made regarding their materiality to patentability. After publication under 35 U.S.C. 122(b)(1), the materials are…
Read MoreWhat are the statutory requirements for handling patent applications and related documents?
35 U.S.C. 122 and 18 U.S.C. 2071 impose statutory requirements which cover the handling of patent applications and related documents. As explained in MPEP 101: “35 U.S.C. 122 and 18 U.S.C. 2071 impose statutory requirements which cover the handling of patent applications and related documents. Suspension, removal, and even criminal penalties may be imposed for…
Read MoreHow does filing a CPA affect confidentiality under 35 U.S.C. 122?
Filing a Continued Prosecution Application (CPA) has implications for the confidentiality of the application under 35 U.S.C. 122: Filing a CPA is construed as a waiver of confidentiality to a certain extent Members of the public entitled to access the prior application may be given similar access to the CPA and other related applications This…
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