(270) Reminder that Rescission of a
Nonpublication Request is
Not Itself a Notice of Foreign Filing
35 U.S.C. 122(b)(2)(B)(iii) provides that an applicant who
has made a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) in
an application filed in the United States Patent and Trademark Office
(USPTO), but who subsequently files, in a foreign country or under a
multilateral international agreement that requires eighteen-month
publication (hereinafter "foreign filing" or "foreign
country"), an application directed to the invention disclosed in the
application filed in the USPTO (hereinafter "counterpart
application"), must notify the USPTO of the foreign filing not later
than forty-five days after the date of such foreign filing. 35 U.S.C.
122(b)(2)(B)(iii) further provides that failure of the applicant to
provide the required notice within this forty-five day period shall
result in abandonment of the application.
Therefore, whenever a patent application is filed in the USPTO
with a nonpublication request, and the applicant later files a
counterpart application in a foreign country, the applicant must
provide notice of the foreign filing within forty-five days to
avoid abandonment of the application by operation of 35 U.S.C.
122(b)(2)(B)(iii). The requirement in 35 U.S.C. 122(b)(2)(B)(iii)
for notice of the foreign filing is in addition to any rescission of
the nonpublication request under 35 U.S.C. 122(b)(2)(B)(ii). That
is, if an applicant files a counterpart application in a foreign
country after having filed an application in the USPTO with a
nonpublication request, filing a rescission of the nonpublication
request under 35 U.S.C. 122(b)(2)(B)(ii) without also providing a
notice of the foreign filing in a timely manner will result in
abandonment of the United States application under 35 U.S.C.
122(b)(2)(B)(iii).
The current USPTO form (PTO/SB/36, revision April 2001 or
later) to rescind a nonpublication request also contains the foreign
filing notice required by 35 U.S.C. 122(b)(2)(B)(iii).
Applicants are strongly encouraged to use the current USPTO form
(PTO/SB/36) when rescinding a nonpublication request because of a
subsequent foreign filing of a counterpart application. If an
applicant merely rescinds a nonpublication request but does not also
file a notice of foreign filing within forty-five days of the
subsequent foreign filing of a counterpart applicant, applicant must
file a petition under 37 CFR 1.137(b) to revive the abandoned United
States application (37 CFR 1.137(f)).
Questions regarding petitions to revive should be directed to
the Office of Petitions at (703) 305-9282. Questions regarding
publication of patent applications (or rescissions of nonpublication
requests) should be directed to the patent application publication
hotline at (703) 605-4283 or by e-mail pgpub@uspto.gov.
April 11, 2003 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
[1270 OG 20]
Top of Notices (270) December 27, 2011