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 MoreHow does rescinding a nonpublication request affect patent term adjustment?
Rescinding a nonpublication request unnecessarily can potentially affect patent term adjustment. The MPEP 1123 cautions: “An applicant should not rescind a nonpublication request or provide a notice of foreign filing unless a nonpublication request was actually made, because filing a rescission when one is not needed leads to a waste of Office resources and may…
Read MoreHow does rescinding a nonpublication request affect patent application publication?
Rescinding a nonpublication request will result in the publication of the patent application. The MPEP 1123 states: “After either a rescission of a nonpublication request or a notice of foreign filing is received by the Office, the Office will enter the rescission or notice of foreign filing into the Office Pre-Examination System to schedule the…
Read MoreWhat form should I use to rescind a nonpublication request or notify the USPTO of foreign filing?
The USPTO provides Form PTO/SB/36 for rescinding a nonpublication request and/or notifying the office of foreign filing. Specifically, the form is titled “Rescission of Previous Nonpublication Request (35 U.S.C. 122(b)(2)(B)(ii)) and, if Applicable, Notice of Foreign Filing (35 U.S.C. 122(b)(2)(B)(iii)).” According to the MPEP: “Form PTO/SB/36 (revision April 2001 or later), “Rescission of Previous Nonpublication…
Read MoreWhat are the requirements for filing a nonpublication request?
According to MPEP 1122, the requirements for filing a nonpublication request are: The request must be submitted with the application upon filing (this is a statutory requirement and cannot be waived). The request must state in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b). The request must contain…
Read MoreWhat types of patent applications are exempt from 18-month publication?
According to MPEP 1120, several types of patent applications are exempt from the 18-month publication rule. These include: Provisional applications filed under 35 U.S.C. 111(b) Design applications filed under 35 U.S.C. 171 International design applications filed under 35 U.S.C. 385 Reissue applications filed under 35 U.S.C. 251 Additionally, applications may not be published if they…
Read MoreWhat is a Notice of Foreign Filing in patent law?
A Notice of Foreign Filing is a requirement for patent applicants who have filed a nonpublication request for their U.S. patent application and subsequently file a counterpart application in a foreign country or under a multilateral international agreement. According to MPEP 1124, applicants must notify the USPTO of this foreign filing within 45 days to…
Read MoreWhat happens if I file a nonpublication request and later decide to file a foreign application?
If you file a nonpublication request and later decide to file a counterpart foreign or international application, you must take one of the following actions: Rescind the nonpublication request before filing the foreign or international application, or Notify the USPTO of the foreign filing no later than 45 days after the filing date of the…
Read MoreWhat is a nonpublication request and how can it be rescinded?
A nonpublication request is a request made by an applicant upon filing a patent application, certifying that the invention will not be the subject of an application filed in another country that requires publication after 18 months. This request can be rescinded at any time. According to MPEP 1123, “An applicant may rescind a previously-filed…
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.…
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