How can I revive a patent application abandoned due to failure to file a Notice of Foreign Filing?
If your patent application has been abandoned due to failure to file a timely Notice of Foreign Filing, you can revive it by filing a petition under 37 CFR 1.137. According to MPEP 1124, this is the sole remedy available to restore the application to pending status. The petition must include: The required reply (in…
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 is the deadline for filing a Notice of Foreign Filing?
The deadline for filing a Notice of Foreign Filing is 45 days after the filing date of the counterpart application in a foreign country or under a multilateral international agreement. This requirement is specified in 35 U.S.C. 122(b)(2)(B)(iii) and MPEP 1124. As stated in MPEP 1124: “The notice of foreign filing must be filed not…
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 happens if I fail to file a Notice of Foreign Filing on time?
Failure to file a Notice of Foreign Filing within the required 45-day period results in the abandonment of the U.S. patent application. This consequence is explicitly stated in MPEP 1124 and 35 U.S.C. 122(b)(2)(B)(iii). According to MPEP 1124: “35 U.S.C. 122(b)(2)(B)(iii) further provides that failure of the applicant to provide the required notice within this…
Read MoreCan I use a certificate of mailing for a Notice of Foreign Filing?
Yes, you can use a certificate of mailing or transmission under 37 CFR 1.8 for a Notice of Foreign Filing. This is explicitly stated in MPEP 1124. According to MPEP 1124: “Since the notice of foreign filing is required by the statute, the benefit of a certificate of mailing or transmission under 37 CFR 1.8…
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