What 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…

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What 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…

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What 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…

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What 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…

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What 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…

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