How can an applicant avoid publication of their patent application?
There are several ways an applicant can avoid publication of their patent application, as outlined in MPEP 1120: File a nonpublication request: Applicants can file a nonpublication request in compliance with 37 CFR 1.213(a) at the time of filing the application. Express abandonment: Applicants can file a petition under 37 CFR 1.138(c) to expressly abandon…
Read MoreWhat is Form PTO/SB/36 and how is it used in rescinding a nonpublication request?
Form PTO/SB/36 is a USPTO form that can be used to rescind a nonpublication request and provide notice of foreign filing. The MPEP 1123 states: “Form PTO/SB/36 (revision April 2001 or later) may be used to both rescind a nonpublication request and provide notice of foreign filing. The form is reproduced in MPEP § 1135.“…
Read MoreWhat form can I use to file a Notice of Foreign Filing?
The USPTO provides a specific form that can be used to file a Notice of Foreign Filing and/or rescind a nonpublication request. This form is Form PTO/SB/36, as mentioned in MPEP 1124. According to MPEP 1124: “Form PTO/SB/36 (revision April 2001 or later) may be used to both rescind a nonpublication request and provide notice…
Read MoreWhat are the consequences of filing a foreign application after making a nonpublication request?
If an applicant files a foreign application after making a nonpublication request in the US, they must take specific actions to avoid abandonment of their US application. According to MPEP 1123: “If applicant makes a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) and then rescinds the nonpublication request before or on the date a foreign or…
Read MoreCan I file a nonpublication request after submitting my patent application?
No, you cannot file a nonpublication request after submitting your patent application. According to MPEP 1122: “A nonpublication request must be filed upon the filing of the application. This is a statutory requirement and cannot be waived.“ The request must be included with the application papers at the time of filing. It cannot be filed…
Read MoreWhat is the difference between rescinding a nonpublication request and providing notice of foreign filing?
Rescinding a nonpublication request and providing notice of foreign filing are two distinct actions with different purposes and timing requirements. According to MPEP 1123: 1. Rescinding a nonpublication request: Can be done at any time Allows the application to be published Should be done before filing a foreign application if the nonpublication request is in…
Read MoreWhat are the consequences of not providing timely notice of foreign filing after making a nonpublication request?
Failing to provide timely notice of foreign filing after making a nonpublication request can have serious consequences. According to 35 U.S.C. 122(b)(2)(B)(iii) and MPEP 1123: “A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned.“ To avoid abandonment, an applicant who has filed…
Read MoreWhat is the consequence of filing an inappropriate nonpublication request?
Filing an inappropriate nonpublication request can have serious consequences. According to MPEP 1122: “If applicants filed a nonpublication request in a U.S. application that claims the benefit to an earlier foreign or international application, the Office will not accept the nonpublication request and will assign a projected publication date. The applicant will be notified that…
Read MoreWhat is the significance of the actual date of receipt for rescinding a nonpublication request?
The actual date of receipt of a request to rescind a nonpublication request is crucial, especially when it relates to foreign filing. According to MPEP 1123: “No benefit can be given to a certificate of mailing or transmission under 37 CFR 1.8 on a request to rescind a nonpublication request in determining whether there has…
Read MoreWhat are the exceptions to the 18-month publication rule for patent applications?
While the American Inventors Protection Act (AIPA) introduced the 18-month publication rule, there are several exceptions to this requirement. According to MPEP 901.03, an application shall not be published if it falls under any of the following categories: (A) no longer pending; (B) subject to a secrecy order under 35 U.S.C. 181; (C) a provisional…
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