General

35 U.S.C. 122

Confidential status of applications; publication of

patent applications.

(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications

for patents shall be kept in confidence by the Patent and Trademark Office and no

information concerning the same given without authority of the applicant or owner

unless necessary to carry out the provisions of an Act of Congress or in such

special circumstances as may be determined by the Director.

(b) PUBLICATION.—

(1) IN GENERAL.—

(A) Subject to paragraph (2), each application for a patent

shall be published, in accordance with procedures determined by the

Director, promptly after the expiration of a period of 18 months from

the earliest filing date for which a benefit is sought under this

title. At the request of the applicant, an application may be

published earlier than the end of such 18-month period.

(B) No information concerning published patent applications

shall be made available to the public except as the Director

determines.

(C) Notwithstanding any other provision of law, a

determination by the Director to release or not to release information

concerning a published patent application shall be final and

nonreviewable.

(2) EXCEPTIONS.—

(A) An application shall not be published if that

application is—

(i) no longer pending;

(ii) subject to a secrecy order under

section 181

;

(iii) a provisional application filed under

section

111(b)

; or

(iv) an application for a design patent filed under

chapter

16

.

(B)

(i) If an applicant makes a request upon filing,

certifying that the invention disclosed in the application has

not and will not be the subject of an application filed in

another country, or under a multilateral international

agreement, that requires publication of applications 18 months

after filing, the application shall not be published as provided

in paragraph (1).

(ii) An applicant may rescind a request made under

clause (i) at any time.

(iii) An applicant who has made a request under clause

cation has

not and will not be the subject of an application filed in

another country, or under a multilateral international

agreement, that requires publication of applications 18 months

after filing, the application shall not be published as provided

in paragraph (1).

(ii) An applicant may rescind a request made under

clause (i) at any time.

(iii) An applicant who has made a request under clause

(i) but who subsequently files, in a foreign country or under a

multilateral international agreement specified in clause (i), an

application directed to the invention disclosed in the

application filed in the Patent and Trademark Office, shall

notify the Director of such filing not later than 45 days after

the date of the filing of such foreign or international

application. A failure of the applicant to provide such notice

within the prescribed period shall result in the application

being regarded as abandoned.

(iv) If an applicant rescinds a request made under

clause (i) or notifies the Director that an application was

filed in a foreign country or under a multilateral international

agreement specified in clause (i), the application shall be

published in accordance with the provisions of paragraph (1) on

or as soon as is practical after the date that is specified in

clause (i).

(v) If an applicant has filed applications in one or

more foreign countries, directly or through a multilateral

international agreement, and such foreign filed applications

corresponding to an application filed in the Patent and

Trademark Office or the description of the invention in such

foreign filed applications is less extensive than the

application or description of the invention in the application

filed in the Patent and Trademark Office, the applicant may

submit a redacted copy of the application filed in the Patent

and Trademark Office eliminating any part or description of the

invention in such application that is not also contained in any

of the corresponding applications filed in a foreign country

is less extensive than the

application or description of the invention in the application

filed in the Patent and Trademark Office, the applicant may

submit a redacted copy of the application filed in the Patent

and Trademark Office eliminating any part or description of the

invention in such application that is not also contained in any

of the corresponding applications filed in a foreign country.

The Director may only publish the redacted copy of the

application unless the redacted copy of the application is not

received within 16 months after the earliest effective filing

date for which a benefit is sought under this title. The

provisions of

section

154(d)

shall not apply to a claim if the

description of the invention published in the redacted

application filed under this clause with respect to the claim

does not enable a person skilled in the art to make and use the

subject matter of the claim.

(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish

appropriate procedures to ensure that no protest or other form of pre-issuance

opposition to the grant of a patent on an application may be initiated after

publication of the application without the express written consent of the

applicant.

(d) NATIONAL SECURITY.— No application for patent shall be published

under subsection (b)(1) if the publication or disclosure of such invention would

be detrimental to the national security. The Director shall establish appropriate

procedures to ensure that such applications are promptly identified and the

secrecy of such inventions is maintained in accordance with

chapter 17

.

t of the

applicant.

(d) NATIONAL SECURITY.— No application for patent shall be published

under subsection (b)(1) if the publication or disclosure of such invention would

be detrimental to the national security. The Director shall establish appropriate

procedures to ensure that such applications are promptly identified and the

secrecy of such inventions is maintained in accordance with

chapter 17

.

(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—

(1) IN GENERAL.—Any third party may submit for

consideration and inclusion in the record of a patent application, any

patent, published patent application, or other printed publication of

potential relevance to the examination of the application, if such

submission is made in writing before the earlier of—

(A) the date a notice of allowance under

section 151

is given or mailed in the

application for patent; or

(B) the later of—

(i) 6 months after the date on which

the application for patent is first published

under

section 122

by the Office, or

(ii) the date of the first rejection

under

section 132

of any claim by the examiner during the examination of the

application for patent.

(2) OTHER REQUIREMENTS.—Any submission under

paragraph (1) shall—

(A) set forth a concise description of the

asserted relevance of each submitted document;

(B) be accompanied by such fee as the

Director may prescribe; and

(C) include a statement by the person making

such submission affirming that the submission was made in compliance

with this section.

18 U.S.C. 2071

Concealment, removal, or mutilation generally.

(a) Whoever willfully and unlawfully conceals, removes, mutilates,

obliterates, or destroys, or attempts to do so, or, with intent to do so takes and

carries away any record, proceeding, map, book, paper, document, or other thing,

filed or deposited with any clerk or officer of any court of the United States, or

in any public office, or with any judicial or public officer of the United States,

shall be fined under this title or imprisoned not more than three years, or

both.

, or destroys, or attempts to do so, or, with intent to do so takes and

carries away any record, proceeding, map, book, paper, document, or other thing,

filed or deposited with any clerk or officer of any court of the United States, or

in any public office, or with any judicial or public officer of the United States,

shall be fined under this title or imprisoned not more than three years, or

both.

(b) Whoever, having the custody of any such record, proceeding, map,

book, document, paper, or other thing, willfully and unlawfully conceals, removes,

mutilates, obliterates, falsifies, or destroys the same, shall be fined under this

title or imprisoned not more than three years, or both; and shall forfeit his

office and be disqualified from holding any office under the United States. As

used in this subsection, the term “office” does not include the office held by any

person as a retired officer of the Armed Forces of the United States.

37 CFR 1.11  Files open to the public.

(a) The specification, drawings, and all papers relating to the file of:

A published application; a patent; or a statutory invention registration are open

to inspection by the public, and copies may be obtained upon the payment of the

fee set forth in §

1.19(b)(2)

. If an application

was published in redacted form pursuant to §

1.217

, the complete file

wrapper and contents of the patent application will not be available if: The

requirements of paragraphs (d)(1), (d)(2), and (d)(3) of §

1.217

have

been met in the application; and the application is still pending. See § 2.27 of

this title for trademark files.

*****

37 CFR 1.14  Patent applications preserved in confidence.

ation

was published in redacted form pursuant to §

1.217

, the complete file

wrapper and contents of the patent application will not be available if: The

requirements of paragraphs (d)(1), (d)(2), and (d)(3) of §

1.217

have

been met in the application; and the application is still pending. See § 2.27 of

this title for trademark files.

*****

37 CFR 1.14  Patent applications preserved in confidence.

(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)

of this section for international applications and paragraph (j) of this

section for international design applications) may be available in the

following situations:

(i)

Patented applications and statutory invention

registrations.

The file of an application that has issued

as a patent or published as a statutory invention registration is

available to the public as set forth in §

1.11

. A copy of the patent

application-as-filed, the file contents of the application, or a

specific document in the file of such an application may be provided

upon request and payment of the appropriate fee set forth in §

1.19(b)

.

(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)

.

.19(b)

.

(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.

(iv)

Unpublished abandoned applications (including provisional

applications) that are identified or relied upon.

The

file contents of an unpublished, abandoned application may be made

available to the public if the application is identified in a U.S.

patent, a statutory invention registration, a U.S. patent application

publication, 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. An application is considered to have

been identified in a document, such as a patent, when the application

number or serial number and filing date, first named inventor, title,

and filing date or other application specific information are provided

in the text of the patent, but not when the same identification is

made in a paper in the file contents of the patent and is not included

in the printed patent

ication is considered to have

been identified in a document, such as a patent, when the application

number or serial number and filing date, first named inventor, title,

and filing date or other application specific information are provided

in the text of the patent, but not when the same identification is

made in a paper in the file contents of the patent and is not included

in the printed patent. Also, the file contents may be made available

to the public, upon a written request, if benefit of the abandoned

application is claimed under

35 U.S.C. 119(e)

,

120

,

121

,

365(c)

, or

386(c)

in an application that has issued as a

U.S. patent, or has published as a statutory invention registration, a

U.S. patent application publication, 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). A copy of the application-as-filed, the file

contents of the application, or a specific document in the file of the

application may be provided to any person upon written request, and

payment of the appropriate fee (§

1.19(b)

).

(v)

Unpublished pending applications (including provisional

applications) whose benefit is claimed.

A copy of the

file contents of an unpublished pending application may be provided to

any person, upon written request and payment of the appropriate fee (§

1.19(b)

), if the benefit of the application is

claimed under

35 U.S.C. 119(e)

,

120

,

121

,

365(c)

, or

386(c)

in an application that has issued as a

U.S. patent, or in an application that has published as a statutory

invention registration, a U.S. patent application publication, 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)

d under

35 U.S.C. 119(e)

,

120

,

121

,

365(c)

, or

386(c)

in an application that has issued as a

U.S. patent, or in an application that has published as a statutory

invention registration, a U.S. patent application publication, 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). A copy

of the application-as-filed, or a specific document in the file of the

pending application may also be provided to any person upon written

request and payment of the appropriate fee (§

1.19(b)

). The Office will not provide access to

the paper file of a pending application, except as provided in

paragraph (c) or (i) of this section.

(vi)

Unpublished pending applications (including provisional

applications) that are incorporated by reference or otherwise

identified

. A copy of the application as originally filed

of an unpublished pending application may be provided to any person,

upon written request and payment of the appropriate fee (§

1.19(b)

), if the application is incorporated by

reference or otherwise identified in a U.S. patent, a statutory

invention registration, a U.S. patent application publication, 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

Office will not provide access to the paper file of a pending

application, except as provided in paragraph (c) or (i) of this

section.

ation publication, 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

Office will not provide access to the paper file of a pending

application, except as provided in paragraph (c) or (i) of this

section.

(vii)

When a petition for access or a power to inspect is

required

. Applications that were not published or

patented, that are not the subject of a benefit claim under

35 U.S.C. 119(e)

,

120

,

121

,

365(c)

, or

386(c)

in an application that has issued as a

U.S. patent, an application that has published as a statutory

invention registration, a U.S. patent application publication, 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), or are

not identified in a U.S. patent, a statutory invention registration, a

U.S. patent application publication, 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, are not available to the public. If an

application is identified in the file contents of another application,

but not the published patent application or patent itself, a granted

petition for access (see paragraph (i)) or a power to inspect (see

paragraph (c) of this section) is necessary to obtain the application,

or a copy of the application.

(2) Information concerning a patent application may be

communicated to the public if the patent application is identified in a

published patent document or in an application as set forth in paragraphs

(a)(1)(i) through (a)(1)(vi) of this section. The information that may be

communicated to the public (

i.e.,

status information)

includes:

ary to obtain the application,

or a copy of the application.

(2) Information concerning a patent application may be

communicated to the public if the patent application is identified in a

published patent document or in an application as set forth in paragraphs

(a)(1)(i) through (a)(1)(vi) of this section. The information that may be

communicated to the public (

i.e.,

status information)

includes:

(i) Whether the application is pending, abandoned, or

patented;

(ii) Whether the application has been published under

35 U.S.C. 122(b)

;

(iii) The application “numerical identifier” which may be:

(A) The eight-digit application number (the two-digit

series code plus the six-digit serial number); or

(B) The six-digit serial number plus any one of the

filing date of the national application, the international

filing date, or date of entry into the national stage; and

(iv) Whether another application claims the benefit of the

application (

i.e.,

whether there are any

applications that claim the benefit of the filing date under

35 U.S.C. 119(e)

,

120

,

121

,

365

, or

386

of the application), and if there are any

such applications, the numerical identifier of the application, the

specified relationship between the applications

(

e.g.,

continuation), whether the application is

pending, abandoned or patented, and whether the application has been

published under

35 U.S.C.

122(b)

.

*****

All U.S. Patent and Trademark Office employees are legally obligated to

preserve pending applications for patents in confidence until they are published or

patented in accordance with

35 U.S.C. 122

and

37 CFR 1.14

.

35 U.S.C.

122

and

18 U.S.C. 2071

impose statutory

requirements which cover the handling of patent applications and related documents.

Suspension, removal, and even criminal penalties may be imposed for violations of these

statutes.

Any employee having custody of a patent application or related documents will

be responsible for maintaining confidentiality and otherwise conforming with the

requirements of law

122

and

18 U.S.C. 2071

impose statutory

requirements which cover the handling of patent applications and related documents.

Suspension, removal, and even criminal penalties may be imposed for violations of these

statutes.

Any employee having custody of a patent application or related documents will

be responsible for maintaining confidentiality and otherwise conforming with the

requirements of law. No part of any application or paper related thereto should be

reproduced or copied except for official purposes. Application files must not be displayed

or handled so as to permit perusal or inspection by any unauthorized member of the

public.

Whenever a paper application (non-electronic), or an artifact file in an

Image File Wrapper (IFW) application, is removed from the operating area having custody of

the file, a charge on the Patent Data Portal system must be properly and promptly made.

Applications, artifact files, and official papers for which there is no electronic file

must not be placed in desk drawers or other locations where they might be easily overlooked

or are not visible to authorized personnel. Interoffice mail must be sent in appropriate

envelopes.

Official papers are accepted only at the Customer Service Window, except for

certain papers that have been specifically exempted from the central delivery policy. See

MPEP §

502

. Appropriate corrective action for IFW messages with faulty

identifications or incorrect routing should be taken at once to ensure the prompt receipt

thereof at the appropriate destination.

All U.S. Patent and Trademark Office employees should bear in mind at all

times the critical importance of ensuring the confidentiality and accessibility of patent

application files and related documents, and in addition to the specific procedures

referred to above, should take all appropriate action to that end.

Examiners, classifiers, and other U.S

receipt

thereof at the appropriate destination.

All U.S. Patent and Trademark Office employees should bear in mind at all

times the critical importance of ensuring the confidentiality and accessibility of patent

application files and related documents, and in addition to the specific procedures

referred to above, should take all appropriate action to that end.

Examiners, classifiers, and other U.S. Patent and Trademark Office employees

who assist public searchers by outlining or indicating a field of search, should also bear

in mind the critical importance of ensuring the confidentiality of information revealed by

a searcher when requesting field of search assistance. See

MPEP § 1701

. Statutory

requirements and curbs regarding the use of information obtained by an employee through

government employment are imposed by 5 CFR 2635.701- 2635.703 and 18 U.S.C. 1905.

Examiners, while holding interviews with attorneys and applicants, should be

careful to prevent exposures of files and drawings of other applicants.

Extreme care should be taken to prevent inadvertent and/or inappropriate

disclosure of the filing date or application number of any application. This applies not

only to Office actions but also to notes in the file or in the artifact folder of IFW

applications.

TELEPHONE AND IN-PERSON REQUESTS FOR INFORMATION CONCERNING PENDING OR ABANDONED

APPLICATIONS

37 CFR 1.14  Patent applications preserved in confidence.

should be taken to prevent inadvertent and/or inappropriate

disclosure of the filing date or application number of any application. This applies not

only to Office actions but also to notes in the file or in the artifact folder of IFW

applications.

TELEPHONE AND IN-PERSON REQUESTS FOR INFORMATION CONCERNING PENDING OR ABANDONED

APPLICATIONS

37 CFR 1.14  Patent applications preserved in confidence.

(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.

*****

(2) Information concerning a patent application may be

communicated to the public if the patent application is identified in a

published patent document or in an application as set forth in paragraphs

(a)(1)(i) through (a)(1)(vi) of this section. The information that may be

communicated to the public (

i.e.,

status information)

includes:

(i) Whether the application is pending, abandoned, or

patented;

(ii) Whether the application has been published under

35 U.S.C.

122(b)

;

(iii) The application “numerical identifier” which may be:

(A) The eight-digit application number (the

two-digit series code plus the six-digit serial number); or

(B) The six-digit serial number plus any one of the

filing date of the national application, the international

filing date, or date of entry into the national stage; and

Whether the application has been published under

35 U.S.C.

122(b)

;

(iii) The application “numerical identifier” which may be:

(A) The eight-digit application number (the

two-digit series code plus the six-digit serial number); or

(B) The six-digit serial number plus any one of the

filing date of the national application, the international

filing date, or date of entry into the national stage; and

(iv) Whether another application claims the benefit of the

application (

i.e.,

whether there are any

applications that claim the benefit of the filing date under

35 U.S.C.

119(e)

,

120

,

121

,

365

, or

386

of the

application), and if there are any such applications, the numerical

identifier of the application, the specified relationship between

the applications (

e.g.,

continuation), whether

the application is pending, abandoned or patented, and whether the

application has been published under

35 U.S.C.

122(b)

.

*****

Except as provided in

35 U.S.C. 122(b)

, no information

concerning pending or abandoned patent applications (except applications which have been

published, reissue applications and reexamination proceedings) may be given to the

public without appropriate written authorization. See

35 U.S.C. 122

and

37 CFR

1.14

.

When handling an incoming telephone call or an in-person request for

information regarding an unpublished pending or abandoned patent application, no

information should be disclosed until the identity of the requester can be adequately

verified as set forth below. Particular care must be exercised when a request is made

for the publication date or publication number, or issue date and patent number assigned

to a

pending

patent application. If the publication or issue date is

later than the current date (i.e., the date of the request), such information may be

given

only

to the applicant, an inventor, the assignee of record, or

the attorney or agent of record

Particular care must be exercised when a request is made

for the publication date or publication number, or issue date and patent number assigned

to a

pending

patent application. If the publication or issue date is

later than the current date (i.e., the date of the request), such information may be

given

only

to the applicant, an inventor, the assignee of record, or

the attorney or agent of record.

The following procedure should be followed before any information about an

unpublished pending or abandoned patent application is given over the telephone:

(A) Obtain the caller’s full name, the application number, and the

caller’s telephone number. Ask the caller if there is a patent practitioner

(attorney or agent) of record.

(1) If there is a patent practitioner of record, ask for the

patent practitioner's registration number. If the registration number is not

known, ask for the name of the patent practitioner of record. Inform the

caller that a patent practitioner of record will be called after

verification of their identity and that information concerning the

application will be released to that patent practitioner.

(2) If there is no patent practitioner of record, ask the caller

why they are entitled to information concerning the application. If the

caller identifies theirself as an inventor, an applicant or an authorized

representative of the assignee of record, ask for the correspondence address

of record and inform caller that their association with the application must

be verified before any information concerning the application can be

released and that they will be called back. If the caller indicates that

they are not an inventor, applicant or an authorized representative of the

assignee of record then status information may only be given pursuant to

MPEP §

102

.

(B) Verify that information concerning the application can be released

by checking Patent Data Portal or the application file.

ation concerning the application can be

released and that they will be called back. If the caller indicates that

they are not an inventor, applicant or an authorized representative of the

assignee of record then status information may only be given pursuant to

MPEP §

102

.

(B) Verify that information concerning the application can be released

by checking Patent Data Portal or the application file.

(1) If the caller stated there was a patent practitioner of

record, Patent Data Portal should be used to verify the registration number

given or to obtain the registration number of a patent practitioner of

record. Then Patent Data Portal (using the registration number) should be

used to obtain a telephone number for a patent practitioner of record.

(2) If the caller identified theirself as an inventor, applicant

or an authorized representative of the assignee of record, Patent Data

Portal should be used to verify the correspondence address of record. Patent

Data Portal should be used to determine if there is a patent practitioner of

record. If there is a patent practitioner of record, their telephone number

can be obtained from Patent Data Portal.

(C) Return the call using the telephone number as specified below.

(1) If a patent practitioner is of record in the application,

information concerning the application should only be released by calling

the patent practitioner's telephone number obtained from Patent Data

Portal.

of

record. If there is a patent practitioner of record, their telephone number

can be obtained from Patent Data Portal.

(C) Return the call using the telephone number as specified below.

(1) If a patent practitioner is of record in the application,

information concerning the application should only be released by calling

the patent practitioner's telephone number obtained from Patent Data

Portal.

(2) If the inventor, applicant or an authorized representative of

the assignee of record requests information, and there is no patent

practitioner of record and the correspondence address of record has been

verified, information concerning the application can be released to the

caller using the telephone number given by the caller. If the caller’s

association with the application cannot be verified, no information

concerning the application will be released. However, the caller should be

informed that the caller’s association with the application could not be

verified.

In handling an in-person request, ask the requester to wait while

verifying their identification as in (B) above.

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