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 international application (hereinafter “foreign filing” or “counterpart application”) directed to the invention disclosed in the U.S. application filed under 37 CFR 1.111(a)) in the USPTO is filed in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, the nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) will be treated as annulled and the application will be treated as if the nonpublication request was never made.“
To avoid abandonment, the applicant must either:
- Rescind the nonpublication request before filing the foreign application, or
- File a notice of foreign filing within 45 days of filing the foreign application
To learn more: