How 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 MoreCan I rescind an express abandonment if my application is published anyway?
Unfortunately, once an express abandonment is recognized, it cannot be rescinded, even if the application is published. The MPEP explicitly addresses this situation: “The petition for express abandonment to avoid publication will be granted when it is recognized in sufficient time to avoid publication and will be denied when it is not recognized in sufficient…
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 MoreHow can I request modification or rescission of a secrecy order on my patent application?
To request modification or rescission of a secrecy order on your patent application, you need to file a petition with the USPTO. These petitions are decided by the Director of the Technology Center who Oversees Licensing and Review. According to MPEP 1002.02(c)(1): “Petitions for rescission of secrecy order, 37 CFR 5.4, MPEP § 120.” “Petitions…
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 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 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 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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