(408) Helpful Hints Regarding
Publication of Patent Applications
The United States Patent and Trademark Office (USPTO) is now
publishing pending utility and plant applications, other than reissue
applications, under the eighteen-month publication provisions
(eighteen-month publication) of the American Inventors Protection Act
of 1999 (AIPA) (P.L. 106-113). The USPTO has received numerous
telephone and e-mail inquiries concerning publication of patent
applications. This "Helpful Hints" notice highlights questions and
answers that are posted on the USPTO web site at
www.uspto.gov/web/offices/dcom/olia/aipa/infoexch.htm#C
and provides information about the Patent Application Information
Retrieval System. In addition, this notice describes how the projected
or revised publication date of an application is communicated to
applicant, how applicants are informed of the publication of an
application, and provides other information regarding publication of
patent applications.
Questions and Answers
The USPTO posts questions and answers addressing repeatedly
asked questions on the USPTO web site. Applicants are encouraged to
check these questions and answers to see if their inquiries are
addressed before calling the USPTO. Examples of such questions and
answers are:
Q. I received a filing receipt with a projected
publication date, and I don't think that the application should be
published, what should I do?
A. If you do not think that you should have received a
projected publication date because you filed a request for continued
examination or because the filing date of the application is before
November 29, 2000, contact the Technology Center where your application
is assigned and ask for the Customer Service Representative. The
Representative can have the problem corrected.
Patent Application Information Retrieval System
The Patent Application Information Retrieval (PAIR) system is a
system which enables applicants and the public to obtain access to the
USPTO's electronic records for a patent application or patent. PAIR has
a public side, which displays information for published U.S. patent
applications and U.S. patents, as well as a private side, which is only
available to certain applicants and displays information for the
applicants applications. Private PAIR is available to applicants who
have a customer number associated with the correspondence address for
an application and who have acquired the access software (Entrust
Direct Software and a PKI certificate). PAIR can be accessed over the
Internet at http://pair.uspto.gov.
If a projected publication date has been assigned to a patent
application, applicants may submit corrections to the bibliographic
information through the private side of PAIR, instead of mailing in a
request for a corrected filing receipt. The correction will be
reflected in the patent application publication so long as the
correction is submitted more than twelve weeks before the projected
publication date. In the private side of PAIR, applicant should choose
the Publication Review button, and then the Request Data Change button
on the screen. The instructions will then appear with a data entry box
in which the changes can be inserted. For instance "An inventor has
been omitted. John Doe should be added with a residence of Arlington,
VA." Once the change has been confirmed, the Transmit Request button
should be selected, and the information will be electronically sent to
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the USPTO. A copy of the request will not be placed in the patent
application file. Applicant may only submit a request through
PAIR to request correction of inventor information consistent with the
inventor information reflected in the patent application file. For
example, if the USPTO entered four of the five inventors shown in the
executed oath or declaration, applicant may submit a request through
PAIR to add the missing inventor. If the originally filed executed
declaration named an inventor who should not have been named as an
inventor, or did not include someone who should have been included as
an inventor, then applicant must file the change under 37 CFR 1.48.
Requests filed through PAIR will arrive in the Customer Support
Center of the Electronic Business Center (EBC), where the data will be
entered in the USPTO's computer database, and, once the data is
entered, the changes will be displayed in PAIR. A corrected filing
receipt will be mailed to applicant once the EBC has made the
correction. This new means of requesting a change to the bibliographic
data should greatly assist the applicant and the Office, and should
significantly reduce the need for submitting correspondence by mail
requesting corrected filing receipts. The Customer Support Center of
the EBC can be reached by telephone at (703) 305-3028. If applicant
requests a change that cannot be made through PAIR (e.g., a change to
the order of inventor names, or the addition of an inventor not named
in the executed oath or declaration), then the EBC will send a
communication to applicant indicating that the request cannot be made
through PAIR.
Notice of Projected Publication Date
The filing receipt of an application filed on or after November
29, 2000, including a Continued Prosecution Application (CPA) filed on
or after November 29, 2000 in an application filed before May 29, 2000,
includes the projected publication date (PPD) that has been assigned to
a patent application, or if a nonpublication request was filed, that
the request is acknowledged and confirming that there is no PPD. The
projected publication date of an application is the Thursday after the
date that is eighteen months after the earliest filing date claimed by
the applicant. Accordingly, if the application does not claim priority
under 35 U.S.C. 119, 120 or 365, then the projected publication
date is eighteen months after the filing date of the application. If
the application claims priority, such as priority under 35 U.S.C.
119(e) to a provisional application, then the projected publication
date is the Thursday after the date that is eighteen months after the
filing date of the provisional application. If the earliest priority
claim was more than 15 months before the filing date of the
application, then the projected publication date will be about fourteen
weeks after the mailing date of the filing receipt. If the projected
publication date is changed by more than six weeks, a "Notice of New
or Revised Publication Date" will be mailed, informing applicant of
the new projected publication date.
Notice of Publication Prior to Publication and Publication
of Patent Application
Applicant will be mailed a notice which will indicate the
publication number and publication date about two weeks before the
publication date of the application. Upon publication, the publication
will be available on the USPTO web sites' Searchable Patent Databases
section at www.uspto.gov/patft and information about the application will
be available on the public, as well as on the private, side of PAIR.
Nonpublication Requests
Applicants are reminded that for plant and utility applications
filed on or after November 29, 2000, a request for nonpublication
must be made at the time of filing and be conspicuous.
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See 37 CFR 1.213(a)(2). A non-conspicuous request such as a
request included on an application transmittal letter will generally
not be noticed, and the application will be assigned a publication
date. Applicants are encouraged to use USPTO Form PTO/SB/35, if a
nonpublication request is to be made and applicants do not want the
application published and the benefits of 35 U.S.C. 154(d). If a
nonpublication request is filed, it is recommended that the
nonpublication request be itemized on a post card receipt. A request
for nonpublication is appropriate only if the application has not been
and will not be the subject of an application filed in another country,
or under a multilateral agreement, that requires publication of
applications eighteen months after filing.
If applicant did not submit a nonpublication request on filing,
the request cannot be filed later and be effective. See 35
U.S.C. 122(b)(2)(B)(i). Instead, applicant may expressly abandon the
application by filing a petition under 37 CFR 1.138(c), and file a
continuation application under 37 CFR 1.53(b) by including a
nonpublication request upon filing of the continuation application. The
continuation application may claim benefit under 35 U.S.C. 120 to
the prior application. Alternatively, if the application does not claim
priority to another application (see 35 U.S.C. 111(b)(7)), applicant
may file a petition to convert the application into a provisional
application (see 37 CFR 1.53(c)). Thereafter, applicant may
file a non-provisional application with a nonpublication request and
claim the benefit of the prior provisional application in the
non-provisional application under 35 U.S.C. 119(e). Applicant cannot
avoid publication of the application where a nonpublication request
complying with 37 CFR 1.213(a) has not been submitted at the time of
filing by subsequently submitting a request for continued examination
(RCE), since an RCE is not a new application. In addition, a CPA cannot
be filed because the prior application will have been filed on or after
May 29, 2000. See 37 CFR 1.53(d)(1)(i)(A).
Avoid Preliminary Amendments
Applicants are also reminded that when a continuation or
divisional application (other than a CPA) is filed, applicant should
file a clean copy of the specification, including any required
amendments. See 37 CFR 1.215(a). A copy of a
previously-executed oath or declaration may still be filed with the
clean copy of the specification. See 37 CFR 1.63(d) and
Changes to Patent Practice and Procedure; Final Rule, 62
Fed. Reg. 53131, 53148 (October 10, 1997), 1203 Off.
Gaz. Pat. Office 63, 77 (October 21, 1997). If preliminary
amendments are filed, the preliminary amendments (new claims, etc.)
will not be reflected in the patent application publication, unless
they are submitted as part of a submission through the Electronic
Filing System (EFS). See 37 CFR 1.215(c). For a CPA, the
application that is published is the application as originally filed,
i.e., the prior application, and a substitute specification will only
be used for creating the patent application publication if it is
submitted through EFS.
Voluntary Publication of Applications filed Before November 29, 2000
The Office has received several requests for voluntary
publication of an application filed prior to November 29, 2000, where
the request was not submitted in accordance with the EFS requirements.
Such requests will be dismissed, and any processing fee paid (including
those authorized to be charged, e.g., to a deposit account) will be
retained. See 37 CFR 1.221(a). If applicant meets the EFS
requirements, but does not include the publication and processing fees
as set forth in 37 CFR 1.18(d) and 1.17(i), respectively, the Office
will send applicant a letter requiring the fees, and publication of the
application will be delayed.
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For Further Information
General questions regarding publication of patent applications
should be directed to the Customer Service Center, Office of Patent
Publication, by telephone at (703) 305-8283. Questions regarding the
Electronic Filing System should be directed to (703) 305-3028.
Questions of a legal nature should be directed to the Office of Patent
Legal Administration at (703) 308-6906.
July 20, 2001 STEPHEN G. KUNIN
Deputy Commissioner for Patent Examination Policy
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