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1101    Request for Statutory Invention Registration (SIR)  

MPEP SECTION SUMMARY

Only requests for a statutory invention registration filed prior to March 16, 2013 are timely.



1111    SIR Publication and Effect  


MPEP SECTION SUMMARY

The waiver of patent rights to the subject matter claimed in a statutory invention registration takes effect on publication pre-AIA 37 CFR 1.293(c)) and may affect the patentability of claims in related applications without SIR requests, such as divisional or other continuing applications.


(a) If the request for a statutory invention registration is approved the statutory invention registration will be published. The statutory invention registration will be mailed to the requester at the correspondence address as provided for in 37 CFR § 1.33(a). A notice of the publication of each statutory invention registration will be published in the Official Gazette.
(b) Each statutory invention registration published will include a statement relating to the attributes of a statutory invention registration. The statement will read as follows:

A statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. No article or advertisement or the like may use the term patent, or any term suggestive of a patent, when referring to a statutory invention registration. For more specific information on the rights associated with a statutory invention registration see 35 U.S.C. 157.


1120    Eighteen-Month Publication of Patent Applications  

MPEP SECTION SUMMARY

This section covers details on the publication of patent applications after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought. General details, exceptions, requirements, and projected publication dates are all discussed.


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(b) PUBLICATION.—

(1) IN GENERAL.—

(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.
(B) No information concerning published patent applications shall be made available to the public except as the Director determines.
(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.

(2) EXCEPTIONS.—

(A) An application shall not be published if that application is—

(i) no longer pending;
(ii) subject to a secrecy order under section 181 ;
(iii) a provisional application filed under section 111(b); or
(iv) an application for a design patent filed under chapter 16.

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(a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless:

(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see § 5.2), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
(3) The application has issued as a patent in sufficient time to be removed from the publication process; or
(4) The application was filed with a nonpublication request in compliance with § 1.213(a).

(b) Provisional applications under 35 U.S.C. 111(b)shall not be published, and design applications under 35 U.S.C. chapter 16, international design applications under 35 U.S.C. chapter 38, and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or § 1.16(c)) and any English translation required by § 1.52(d). The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract ( § 1.72(b)), drawings in compliance with § 1.84, a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and the inventor's oath or declaration or application data sheet containing the information specified in § 1.63(b).
(d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.

(a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earli¬est filing date for which a benefit is sought under title 35, United States Code, unless:

(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see § 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
(3) The application has issued as a patent in sufficient time to be removed from the publication process; or
(4) The application was filed with a nonpublication request in compliance with § 1.213(a).

(b) Provisional applications under 35 U.S.C. 111(b) shall not be published, and design applications under 35 U.S.C. chapter 16 and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or 1.16(c)), any English translation required by § 1.52(d), and an executed oath or declaration under § 1.63. The Office may delay publishing any application until it includes any application size fee required by the Office under § 1.16(s) or § 1.492(j), a specification having papers in compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in compliance with § 1.84, and a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and until any petition under § 1.47 is granted.
(d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This three-month period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded.

For applications filed on or after September 16, 2012, an executed oath or declaration for publication of the application is not required.

  • Applicants may postpone filing the inventor’s oath or declaration until payment of the issue fee.


I.   IN GENERAL

With certain exceptions, nonprovisional utility and plant applications for patent filed on or after November 29, 2000 are published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought.

A proper continued prosecution application (CPA) for utility or plant patent filed on or after November 29, 2000 will be published based upon the application papers deposited on the filing date of the first prior application.

Filing an RCE will not cause an application filed before November 29, 2000 to be published.

The Office will generally publish:

  • utility and plant applications filed on or after November 29, 2000; and
  • nonprovisional applications which entered the national stage from an international application filed on or after November 29, 2000 (regardless of whether the international application has been published by the International Bureau (IB) in English).

The Office will not publish the following applications:

  • Provisional applications;
  • Design applications;
  • International design applications; and
  • Reissue applications (because reissue applications are not kept confidential).

Applications will be published after the expiration of a period of eighteen months from the earliest of:

  • the U.S. filing date;
  • the international filing date; or
  • the filing date of an earlier application for which a benefit is sought


II.   EXCEPTIONS

An application will not be published if one of the following exceptions applies:

  • The application is recognized by the Office as no longer pending;
  • The application is national security classified (subject to a secrecy order, or under national security review);
  • The application has issued as a patent in sufficient time to be removed from the publication process; or
  • The application was filed with a nonpublication request

The Office will not publish applications that have issued as patents in sufficient time to be removed from the publication process.

  • If the pre-grant publication process coincides with the patent issue process, the Office will continue with the pre-grant publication process until a patent actually issues.
  • The Office will not publish applications that are recognized as no longer pending.
  • Converting a nonprovisional application to a provisional application will not avoid the publication of the nonprovisional application unless the request to convert is recognized in sufficient time to permit the appropriate officials to remove the nonprovisional application from the publication process.


III.   APPLICATION MUST BE COMPLETE

The Office will not publish an application until the application includes:

  • the basic filing fee; and
  • an English translation if the application is in a language other than English.

The Office may delay publication until the application includes:

  • any application size fee required by the Office;
  • a specification;
  • an abstract;
  • drawings (if any);
  • a sequence listing; and.
  • an executed oath or declaration and/or an application data sheet for application filed on or after September 16, 2012.

The Office may also delay publication until any petition is granted for applications filed prior to September 16, 2012.


IV.   PROJECTED PUBLICATION DATE

Once the application is complete, the Office will provide applicants the projected publication date of the application on a filing receipt.

The projected publication date normally will be the later of:

  • eighteen months from the earliest filing date claimed; or
  • fourteen weeks from the mailing date of the filing receipt.

 

» 1121 Content of a Patent Application Publication