Patent application publications are available electronically on the USPTO website (www.uspto.gov ). Any member of the public may obtain status information concerning any published application via Patent Center. See MPEP § 1730. Published applications that have been scanned into the Image File Wrapper (IFW) system may be available electronically via Patent Center. See 37 CFR 1.14(b). Note that if a published patent application is pending and it is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection. Only copies of the application file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). See MPEP § 103 for additional information pertaining to access to patent application files.
Any member of the public may submit a request under 37 CFR 1.14(a)(1)(ii) or (iii) and the fee set forth in 37 CFR 1.19(b) to the Patent and Trademark Copy Fulfillment Branch of the Public Records Division or electronically through the Certified Copy Center storefront at https://certifiedcopycenter.uspto.gov/ for:
Any member of the public may obtain status information concerning any published application via Patent Center. See MPEP § 1730. 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 also be provided when the application is referred to by its application number in a U.S. patent application publication as well as a U.S. patent, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The public may obtain continuity data for applications that have been published as a U.S. patent application publication or as a U.S. patent. See also MPEP § 102.
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.
If an applicant wishes to have an application published earlier than the date that is eighteen months after the earliest filing date for which benefit is claimed, applicant may submit a request in compliance with 37 CFR 1.219 and the publication fee set forth in 37 CFR 1.18 (d). The Office will publish the application as soon as possible if the application is otherwise ready for publication. The publication process takes approximately 14 weeks and does not begin until the application is complete and ready for publication (e.g., an executed oath or declaration has been filed and the filing fee has been paid). See MPEP § 1120. The Office will not give any consideration to requests for publication on a certain date. Note that if early publication is requested, and the publication fee paid, applicant will not be required to pay the publication fee at allowance.
If an applicant wishes to correct errors in a patent application publication, or republish the application with an amended specification (including amended claims) and/or replacement drawings, applicant may file a request for republication pursuant to37 CFR 1.221(a). The request for republication must include:
If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed. If the fees are not paid, the USPTO will send the applicant a letter requiring the fees and republication of the application will be delayed. While there is no set time limit for requesting republication, the application must still be pending.
If the application is recognized by the Office as abandoned, or has issued as a patent, the application may be removed from the publication process and not republished, even if the Office accepted the request.
If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication pursuant to 37 CFR 1.221(b). Prior to submitting a request for a corrected publication under 37 CFR 1.221(b), applicant must check applicant’s records (or Private PAIR) to determine that the application papers submitted to the Office did not contain the alleged material error made by the Office. If applicant submitted a specification that includes illegible text, the Office will not grant a request for corrected publication under 37 CFR 1.221(b) based on errors arising from misinterpretation of such text.
The request for a corrected publication under 37 CFR 1.221(b) must:
The two-month time period is not extendable. A request for corrected publication should include a listing of the alleged material errors made by the Office, marked up copies of the relevant pages of the publication and an indication of where in the specification as filed the relevant text appears. If the period has expired or the mistake is caused by the applicants, applicants may correct the mistakes by filing a request for republication under 37 CFR 1.221(a), and should not file a request for corrected publication under 37 CFR 1.221(b).
The Office will grant a request for a corrected publication under 37 CFR 1.221(b) only when the Office makes a material mistake which is apparent from Office records. A material mistake means a mistake that affects the public’s ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent. An error in the claims, the (effective) filing date of the application, or a serious error in the written description or drawings that is necessary to support the claims may be a material error. The following are examples of material mistake:
Applicants should not file requests for corrected publication that include no material error made by the Office. Errors in the correspondence address, the assignment information or missing assignment information, minor typographical errors or missing section headings are not material mistakes. A failure to include an amendment is not an Office error. See MPEP § 1121. For example, applicants should not file a request for a corrected publication under 37 CFR 1.221(b) for the following situations:
A request for corrected publication under 37 CFR 1.221(b) may result in a patent term adjustment reduction where the Office made only non-material errors (especially those listed above).
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If an application filed in the USPTO and subject to publication under 35 U.S.C. 122(b) includes description that is more extensive than any previously filed corresponding foreign applications, applicant may request for redacted publication under 37 CFR 1.217, eliminating any part or description of the invention that is not also contained in any of the corresponding applications filed in a foreign country. The Office will publish the redacted (less extensive) copy of the application instead of the full description of the invention disclosed in the U.S. application (as provided in 37 CFR 1.215(a) ) if applicant timely files a request for redacted publication in compliance with 37 CFR 1.217 which requires the following:
Items (B) – (E) above must be submitted in paper (which includes submitting via EFS-Web) concurrently with the EFS submission of the redacted copy of the application.
The 16-month period is provided by statute (35 U.S.C. 122(b)(2)(B)(v) ), and as such, requests for waiver of this 16-month period will be denied. The title of the invention in the redacted copy of the application must correspond to the title of the application at the time the redacted copy of the application is submitted to the Office. If the redacted copy of the application does not comply with the Office electronic filing system requirements, the Office will publish the full description of the invention disclosed in the U.S. application as provided in 37 CFR 1.215(a).
Once an application has been published, a member of the public may request a copy of the complete file wrapper and contents of, or a copy of a specific paper in, the published application, provided that no redacted copy was timely submitted for publication. If a redacted copy of the application was used for publication, the copy of the specification, drawings, and papers may be limited to a redacted copy, provided that the applicant submits the following:
Papers submitted for redaction are not entitled to the benefit of the certificate of mailing practice under 37 CFR 1.8. If applicant fails to provide the required redacted and marked up copies of the correspondence in compliance with 37 CFR 1.217(d), the Office will provide a copy of the complete file wrapper and contents of the application to any person upon written request pursuant to 37 CFR 1.14.
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Utility and plant applications filed before November 29, 2000 will not be published under 35 U.S.C. 122(b). If an applicant wishes the Office to publish a utility or plant application filed before November 29, 2000 under 35 U.S.C. 122(b), applicant may file a request for voluntary publication under 37 CFR 1.221. The application must be pending and the request for voluntary publication must include:
If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed. Since the Office does not intend to publish abandoned applications, applications that are recognized by the Office as abandoned will not be published. Thus, if applicant submits a request for a voluntary publication of an application, but the application is later abandoned before the application publishes, the application may not be published even if the Office has accepted the request.
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35 U.S.C. 122 includes two provisions regarding submissions by third parties in patent applications. Pursuant to 35 U.S.C. 122(c), no protest or other form or pre-issuance opposition may be initiated after publication of an application without the express written consent of the applicant. 35 U.S.C. 122(c) is implemented by 37 CFR 1.291. For information on protests see MPEP § 1901. 35 U.S.C. 122(e), on the other hand, provides a mechanism for third parties to submit printed publications in another party’s patent application. Under 35 U.S.C. 122(e), any third party may submit printed publications of potential relevance to the examination of an application for consideration and inclusion in the record of the application. Such submissions must be timely made in writing and include a concise description of the asserted relevance of each publication submitted, any fee prescribed by the Director, and a statement of compliance with 35 U.S.C. 122(e). 35 U.S.C. 122(e) is implemented by 37 CFR 1.290, which replaces 37 CFR 1.99. See Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (July 17, 2012) (final rule). Third-party submissions under 37 CFR 1.99 were eliminated as of September 16, 2012.
In contrast to protests under 37 CFR 1.291, third-party submissions under 37 CFR 1.290 may be made in published patent applications where the timing provisions set forth in 37 CFR 1.290(b) are satisfied. Additionally, third-party submissions have different content requirements than protests. While 37 CFR 1.290 limits third-party submissions to printed publications, 37 CFR 1.291 provides for the submission of information in a protest other than publications, including any facts or information adverse to patentability, and arguments to that effect. See MPEP §§ 1901, 1901.02 and 1901.06subsection VII. Moreover, 37 CFR 1.291(c)(2) requires a protest to include a "concise explanation of the relevance" of each item of information submitted. This is distinct from the concise description of relevance required by 37 CFR 1.290(d)(3) for third-party submissions. Unlike the concise description of relevance for a third-party submission under 37 CFR 1.290, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability.
Despite the provisions of 35 U.S.C. 122(c) and (e), the Office occasionally receives third-party inquiries or submissions (other than under 37 CFR 1.290 and 37 CFR 1.291 ) regarding patent applications. For example, third parties have inquired into the timing of future actions on an application, inventorship in an application, and some third parties have insisted that the Office withdraw an application from issue under 37 CFR 1.313 on the basis of unpatentability of a claim. The Office considers inappropriate any third-party inquiry, or submission in an application that is not provided for in 37 CFR 1.290 or 37 CFR 1.291. Any submission filed by a third party in an application that does not comply with the requirements of 37 CFR 1.290 or 37 CFR 1.291 will not be entered into the application file and will be discarded.
Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to or act upon any third-party inquiry or other submission in an application, except those in compliance with 37 CFR 1.290 or 37 CFR 1.291; and (2) decline to accept oral or telephone comments or submissions about applications from third parties. When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 (all Office business should be transacted in writing), as appropriate. See Third Party Attempts to Protest or Otherwise Oppose the Grant of a Published Application, 1269 Off. Gaz. Pat. Office 179 (April 22, 2003). The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.290 or 37 CFR 1.291, by registered practitioners in applications to the Office of Enrollment and Discipline for appropriate action.
The provisions of 35 U.S.C. 122(c) and (e) limit a third party’s ability to protest, oppose the grant of, or have information entered and considered in an application pending before the Office. However, these provisions do not limit the Office’s authority to independently re-open the prosecution of a pending application on the Office’s own initiative and consider information deemed relevant to the patentability of any claim in the application. See Blacklight Power, Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002).
