Only requests for a statutory invention registration filed prior to March 16, 2013 are timely. Requests for a statutory invention registration filed on or after March 16, 2013 will not be treated as the provisions of pre-AIA 35 U.S.C. 157 were repealed on March 16, 2013, effective for any request filed on or after that date. See §3(e) of the America Invents Act. Guidance on requests filed before March 16, 2013 may be found in the ninth revision of the Eighth Edition of the MPEP published August 2012. The material in former MPEP §§ 1103-1109 is not repeated in this edition of the MPEP.
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.
Published SIRs are sequentially numbered in a separate "H" series, starting with number "H1". For a description of the "kind codes" used on other documents published by the U.S. Patent and Trademark Office, see MPEP § 901.04(a).
In accordance with pre-AIA 35 U.S.C. 157(c) , a published SIR will be treated the same as a U.S. patent for all defensive purposes, usable as a reference as of its filing date in the same manner as a patent. A SIR is a "constructive reduction to practice" under pre-AIA 35 U.S.C. 102(g) and "prior art" under all applicable sections of 35 U.S.C. 102 including 35 U.S.C. 102(a)(2) and pre-AIA 35 U.S.C. 102(e). SIRs are classified, cross-referenced, and placed in the search files, disseminated to foreign patent offices, stored in U.S. Patent and Trademark Office computer data bases, made available in commercial data bases, and announced in the Official Gazette.
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, since the waiver of patent rights is effective for all inventions claimed in the SIR and would effectively waive the right of the inventor to obtain a patent on the invention claimed in the same application or on the same invention claimed in any other application not issued before the publication date of the SIR. If an application containing generic claims is published as a SIR, the waiver in that application applies to any other related applications to the extent that the same invention claimed in the SIR is claimed in the other application. Examiners should apply standards similar to those applied in making "same invention" double patenting determinations to determine whether a waiver by an inventor to claims in a SIR precludes patenting by the same inventor to subject matter in any related application. If the same subject matter is claimed in an application and in a published statutory invention registration naming a common inventor, the claims in the application should be rejected as being precluded by the waiver in the statutory invention registration. A rejection as being precluded by a waiver in a SIR cannot be overcome by a terminal disclaimer.
The holder of a SIR will not be able to file a reissue application to recapture the rights, including the right to exclude others from making, using, selling, offering to sell, or importing the invention, that were waived by the initial publication of the SIR.
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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 under title 35, United States Code (eighteen-month publication or pre-grant publication (PGPub)). See 35 U.S.C. 122(b). The Office will generally publish:
The Office will not publish the following applications under 35 U.S.C. 122(b):
Applications will be published after the expiration of a period of eighteen months from the earliest of: (1) the U.S. filing date; (2) the international filing date; or (3) the filing date of an earlier application for which a benefit is sought under 35 U.S.C. 119, 120, 121, 365, or 386. Applicants are encouraged to timely submit any desired priority and benefit claims to ensure that their applications will be published on time and to avoid the need to file a petition to accept unintentionally delayed priority or benefit claims under 37 CFR 1.55 or 1.78 and the surcharge set forth in 37 CFR 1.17(t). See MPEP § 211.04 and 214.02. Applications are normally published based on the application as filed and certain amendments. See MPEP § 1121. 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. (Note: CPA practice has been eliminated as to utility and plant applications effective July 14, 2003. See MPEP § 201.06(d).) Since a request for continued examination (RCE) under 37 CFR 1.114 is not the filing of a new application, filing an RCE will not cause an application filed before November 29, 2000 to be published. The Office will not mail a paper copy of the patent application publication to the applicant, but will mail a notice to the applicant indicating that the application has been published. See MPEP § 1127. Patent application publications are available on the USPTO website (www.uspto.gov ).
An application will not be published if one of the following exceptions as set forth in 37 CFR 1.211 applies:
The Office will not publish applications that are recognized as no longer pending. See 37 CFR 1.211(a)(1). An application is not "recognized by the Office as no longer pending" when the period for reply (either the shortened statutory period for reply or the maximum extendable period for reply) to an Office action has expired, but the Office has not yet entered the change of status (to abandoned) of the application in the Office’s Patent Data Portal (PDP) system and mailed a notice of abandonment. An application will remain in the publication process until the Patent Data Portal system indicates that the application is abandoned. Once the Patent Data Portal system indicates that an application is abandoned, the Office will attempt to remove the application from the publication process and avoid dissemination of the application information.
Unless an applicant has received a notice of abandonment at least 4 weeks prior to the projected publication date, an applicant who wants to abandon the application to avoid publication must file a petition under 37 CFR 1.138(c) to expressly abandon the application and avoid publication. See MPEP § 1125. An applicant who seeks to avoid publication by permitting an application to become abandoned (for failure to reply to an Office action) and passively waiting for the Office to recognize that the application has become abandoned bears the risk that the Office will not recognize that the application has become abandoned and change the status of the application in the Patent Data Portal system in sufficient time to avoid publication.
The Office will not publish applications that have issued as patents in sufficient time to be removed from the publication process. See 37 CFR 1.211(a)(3). 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. 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 (e.g., abandonment due to failure to pay the issue fee, or withdrawal from issue). 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 may refuse to publish an application, or to include a portion of an application in the publication, 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. See 37 CFR 1.211(d). The Office may require a substitute specification to delete the portion of the application that would violate Federal or state law, or that contains offensive or disparaging material.
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. The Office cannot ensure that it can remove an application from the publication process or avoid publication of application information any time after the publication process for the application has been initiated. Technical preparations for publication of an application generally begin four months prior to the projected publication date. The projected publication date is indicated on the filing receipt for the patent application.
In accordance with 37 CFR 1.211(c), publication will not occur or will be delayed in certain circumstances. The Office will not publish an application until the application includes:
The Office may delay publication until the application includes:
If an application does not contain the content specified in 37 CFR 1.211(c) and papers or drawings of sufficient quality to create a patent application publication by eighteen months from the earliest filing date for which benefit is claimed, the Office will publish the application as soon as practical after these deficiencies are corrected. For example, publication of the patent application publication may be delayed if the application papers submitted on the filing date of the application do not include the content needed (e.g., an abstract or the information specified in 37 CFR 1.63(b) in an oath or declaration or an application data sheet) or the specification (including claims) or drawings are not of sufficient quality to be used to create a patent application publication. In such a situation, the Office will issue a preexamination notice requiring a substitute specification or replacement drawings. The applicant’s reply (e.g., substitute specification or replacement drawings) to the notice will be used for creating the patent application publication. If the application on filing includes papers that are of sufficient quality to create the publication, the Office will publish the application using the originally filed application papers.
Applicants who attempt to delay publication by intentionally delaying the submission of the application content necessary for publication may encounter a reduction in any patent term adjustment under 35 U.S.C. 154(b). See 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b).
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: (1) eighteen months from the earliest filing date claimed; or (2) fourteen weeks from the mailing date of the filing receipt. The publication process takes about fourteen weeks. Publication occurs on Thursday of each week.
Applicants should carefully and promptly review their filing receipts. Applicants should promptly file a request for corrected filing receipt if the information on the filing receipt needs to be corrected. In addition, applicants should contact the Application Assistance Unit (see MPEP § 1730) if the projected publication date is incorrect or if a projected publication date has been assigned to an application that should not be published. Applicants should also promptly check any priority or benefit claims provided on the filing receipt and timely file or correct any priority or benefit claims if the filing receipt does not include the desired claims or includes incorrect claims. If the information is incorrect, Applicants should promptly file a request for corrected filing receipt to assist the Office in quickly processing the change prior to export of the application to the publisher. This will avoid the need to file a petition under 37 CFR 1.55 or 1.78 to accept unintentionally delayed claims and the surcharge under 37 CFR 1.17 (t). See MPEP § 211.04 and 214.02. Furthermore, if the corrections are not recognized by the Office before the technical preparation for publication has begun, the Office cannot change the projected publication date and include the corrections in the publication.
A patent application publication includes a front page containing information similar to that contained on the front page of a patent, the drawings (if any), and the specification (including claims). The patent application publication will generally be based upon the following:
The patent application publication may also be based upon amendments that expedite the publication process, provided that such amendments are submitted in sufficient time to be entered into the application file before technical preparations for publication of the application have begun (generally four months prior to the projected publication date). While the Office will attempt to use the amendments submitted by applicants, applicants are not entitled to have the amendments used in the publication. For example, the patent application publication may also be based upon the following amendments because they are in formats useable for publication:
The patent application publication of an application that has entered the national stage under 35 U.S.C. 371 may also include amendments made during the international stage, such as: amendments under Article 34 and 19; rectifications; corrections of physical defects under PCT Rule 26; and an abstract rewritten by the International Searching Authority.
If an applicant wants the publication to include drawings other than those submitted with the application as filed (e.g., better quality or amended drawings), applicant may file the replacement drawings in sufficient time to be entered into the application file before four months prior to the projected publication date. The Office cannot guarantee that the latest amendment or any particular amendment will be included in the patent application publication. If applicant wishes to have the patent application publication be based upon a copy of the application (specification, drawings and oath or declaration) as amended, applicant must supply such a copy via the USPTO patent electronic filing system, e.g., set forth in the Legal Framework for Patent Electronic System within one month of the mailing date of the first Office correspondence (e.g., filing receipt) including a confirmation number for the application or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later (see 37 CFR 1.215(c) and Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 Off. Gaz. Pat. Office 97 (December 12, 2000)). See also III. AMENDED APPLICATION FILED VIA THE USPTO PATENT ELECTRONIC FILING SYSTEM, below. The Office will use the electronic copy provided by the applicant to create the publication. A proper continued prosecution application (CPA) filed on or after November 29, 2000 (but before July 14, 2003) will be published based upon the application papers deposited on the filing date of the first prior application.
Applicants may review the bibliographic information contained in the Office’s database, and application papers that have been scanned into the Image File Wrapper system, via Patent Center or the Private Patent Application Information Retrieval (PAIR) system. Applicants should bring any errors to the Office’s attention before technical preparations for publication of the application have begun (generally four months prior to the projected publication date).
Due to the high cost and limited usefulness of printed paper or composed electronic image versions of lengthy nucleotide and/or amino acid sequences, "Sequence Listings" (for applications filed before July 1, 2022) and "Sequence Listing XMLs" (for applications filed on or after July 1, 2022) which are at least 600 Kb (about 300 typed pages) are not printed with the paper and composed electronic image (page image) versions of patents and patent application publications. It is noted that a "Sequence Listing XML" file is transformed from an XML file to an ASCII plain text file, and the ASCII plain text file size is used to determine if the "Sequence Listing XML" is a lengthy "Sequence Listing XML." Lengthy "Sequence Listings" or "Sequence Listing XMLs" will be published only in electronic form on the USPTO sequence homepage (https://seqdata.uspto.gov ). The patent or patent application publication will include a statement that the patent or application contains a lengthy "Sequence Listing" or "Sequence Listing XML" section (as applicable) and a hyperlink to the webpage containing the "Sequence Listing" or "Sequence Listing XML". See MPEP §§ 2419 et seq. and 2435.
Applicants should not file any preliminary amendment with the application. Submitting applications without any accompanying preliminary amendment reduces the processing required of the Office, and will help to ensure that patent application publications are printed correctly.
A preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application under 37 CFR 1.115(a)(1). The Office will include such a preliminary amendment that is present on the filing date of the application in the patent application publication. If the preliminary amendment that is present on the filing date of the application is not in a format that is useable for publication, the Office will issue a notice requiring the applicant to submit the amendment in a format useable for publication. Generally, a substitute specification (excluding claims) is required for any preliminary amendments to the specification (other than the claims) that are present on the filing date of the application. Even though a substitute specification is a useable format for publication, applicant should not file a substitute specification with the application because the application size fee will be calculated based on the application papers including the clean version and marked-up version of the substitute specification.
To avoid submitting preliminary amendments, applicants should incorporate any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously-filed patent application. In such a continuation or divisional application, a new specification (e.g., reflecting amendments made in the parent application) may be submitted together with a copy of the oath or declaration from the previously filed application so long as no new matter is included in the specification. See 37 CFR 1.63(d)(1)(iii). The specific reference to the prior application required by 35 U.S.C. 119(e) or 120 and 37 CFR 1.78(a) in applications filed before September 16, 2012 can be submitted in an application data sheet (ADS) rather than in a preliminary amendment to the first sentence(s) of the specification. Such references in applications filed on or after September 16, 2012 may only be made in an ADS. If the specific reference is submitted in a preliminary amendment, however, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim.
Applications with poor quality text, which may be acceptable for scanning and examination purposes, may lead to errors in the patent application publication. Correction of these errors and inclusion of any desired amendments into the text of the originally-filed specification and drawings will only occur if applicant files a request for republication under 37 CFR 1.221(a). They will not be corrected by the Office in a corrected publication under 37 CFR 1.221(b). See MPEP § 1130.
