1125 Express Abandonment to Avoid Publication
|
*****
(c) An applicant seeking to abandon an application to avoid publication of the application (37 CFR 1.211(a)(1)) must submit a declaration of express abandonment by way of a petition under this paragraph including the fee set forth in § 1.17(h) in sufficient time to permit the appropriate officials to recognize the abandonment and remove the application from the publication process. Applicants should expect that the petition will not be granted and the application will be published in regular course unless such declaration of express abandonment and petition are received by the appropriate officials more than four weeks prior to the projected date of publication.
*****
1126 Publication Fees
|
(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.
The publication fee must be paid in each application published (or scheduled to be published) before a patent will be granted on the application.
- The publication fee will be required with the Notice of Allowance and Fee(s) Due, unless the publication fee was previously paid.
If an application becomes abandoned without being allowed, no publication fee is required.
- The small entity discount is not available for the publication fee.
The sum specified in the Notice of Allowance and Fee(s) Due will also include the publication fee which must be paid within three months from the date of mailing of the Notice of Allowance and Fee(s) Due to avoid abandonment of the application.
- This three-month period is not extendable.
Applicant is required to pay the publication fee to avoid abandonment of the application even if the application has not yet been published at the time when the publication fee is due.
- The Office will continue with the pre-grant publication process until a patent actually issues.
- This is because there are many instances in which the Office mails a notice of allowance in an application but the application does not issue as a patent in regular course.
- Therefore, the Office will not discontinue the pre-grant publication process until a patent has actually issued.
- Since the Office cannot discontinue the pre-grant publication process during the last two to four weeks of the publication process, this will result in a few applications being issued as patents and subsequently being published as patent application publications.
- The Office will refund the publication fee (if paid) if the application is not published as a patent application publication, but will not refund the publication fee if the application is published as a patent application publication, even if it is published after the patent issues.
- Effective January 1, 2014, the publication fee is $0.00.
Accordingly, applicant may file a request for a refund of the publication fee after 4 weeks from the issue date of the patent if the application did not publish.
- A request for refund filed before 4 weeks from the issue date is premature and will be disregarded.
If applicant files a request for continued examination (RCE) after a Notice of Allowance and Fee(s) Due is mailed (but before the expiration of the three-month time period set forth in the Notice of Allowance and Fee(s) Due), the Office will suspend the due date for the publication fee until three months from the mail date of the new Notice of Allowance and Fee(s) Due for the application (if and when a new Notice is mailed).
1128 Availability of Published Applications
|
Section Frequency Chart
| Key |
|
|||||
| 1128 |
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) for international applications and paragraph (j) for international design applications) may be available in the following situations: *****
(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b).
(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section.
*****
(b) Electronic access to an application. Where a copy of the application file or access to the application may be made available pursuant to this section, the Office may at its discretion provide access to only an electronic copy of the specification, drawings, and file contents of the application.
I. ELECTRONIC ACCESS
Any member of the public may obtain status information concerning any published application via the Office’s Patent Application Information Retrieval (PAIR) system.
If a published patent application is pending and is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection and that only copies of the application file may be obtained.
II. COPIES OF PUBLISHED APPLICATIONS
Any member of the public may submit a request and the fee to the Office of Public Records or electronically on the USPTO web site:
- a copy of the complete file wrapper and contents of, or a copy of a specific paper in, any published application, provided that no redacted copy was timely submitted for publication; or
- an appropriately redacted copy of the file wrapper and contents of, or a copy of a specific paper in, any published application for which a redacted copy was timely submitted for publication.
III. STATUS INFORMATION
Any member of the public may obtain status information concerning any published application via the Office’s PAIR system or contact the FIU.
Status information is defined to include identification of whether the application has been published under 35 U.S.C. 122(b), as well as whether the application is pending, abandoned, or patented, and the application number.
Status information may be provided when an application is referred to by its application number in an international publication of an international application under PCT Article 21(2), or in a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States.
1129 Request for Early Publication
|
Applications that will be published under § 1.211 may be published earlier than as set forth in § 1.211(a) at the request of the applicant. Any request for early publication must be accompanied by the publication fee set forth in § 1.18(d). If the applicant does not submit a copy of the application in compliance with the Office electronic filing system requirements pursuant to § 1.215(c), the Office will publish the application as provided in § 1.215(a). No consideration will be given to requests for publication on a certain date, and such requests will be treated as a request for publication as soon as possible.
» 1130 Republication and Correction of Patent Application Publications
