Confidential Nature of International Applications

PCT Article 30

Confidential Nature of the International

Application.

(1)

(a) Subject to the provisions of subparagraph (b), the

International Bureau and the International Searching Authorities shall not

allow access by any person or authority to the international application

before the international publication of that application, unless requested

or authorized by the applicant.

(b) The provisions of subparagraph (a) shall not apply to any

transmittal to the competent International Searching Authority, to

transmittals provided for under

Article 13

, and to

communications provided for under

Article 20

.

(2)

(a) No national Office shall allow access to the international

application by third parties unless requested or authorized by the

applicant, before the earliest of the following dates:

(i) date of the international publication of the

international application,

(ii) date of receipt of the communication of the

international application under

Article 20

,

(iii) date of receipt of a copy of the international

application under

Article 22

.

(b) The provisions of subparagraph (a) shall not prevent any

national Office from informing third parties that it has been designated, or

from publishing that fact. Such information or publication may, however,

contain only the following data: identification of the receiving Office,

name of the applicant, international filing date, international application

number, and title of the invention.

22

.

(b) The provisions of subparagraph (a) shall not prevent any

national Office from informing third parties that it has been designated, or

from publishing that fact. Such information or publication may, however,

contain only the following data: identification of the receiving Office,

name of the applicant, international filing date, international application

number, and title of the invention.

(c) The provisions of subparagraph (a) shall not prevent any

designated Office from allowing access to the international application for

the purposes of the judicial authorities.

(3) The provisions of paragraph (2)(a) shall apply to any receiving

Office except as so far as transmittals provided for under

Article

12(1)

are concerned.

(4) For the purposes of this Article, the term “access” covers any

means by which third parties may acquire cognizance, including individual

communication and general publication, provided, however, that no national Office

shall generally publish an international application or its translation before the

international publication or, if international publication has not taken place by

the expiration of 20 months from the priority date, before the expiration of 20

months from the said priority date.

PCT Article 38

Confidential Nature of the International Preliminary

Examination.

(1) Neither the International Bureau nor the International Preliminary

Examining Authority shall, unless requested or authorized by the applicant, allow

access within the meaning, and with the proviso, of

Article

30(4)

to the file of the international preliminary

examination by any person or authority at any time, except by the elected Offices

once the international preliminary examination report has been established.

(2) Subject to the provisions of paragraph (1) and

Articles 36(1) and

shall, unless requested or authorized by the applicant, allow

access within the meaning, and with the proviso, of

Article

30(4)

to the file of the international preliminary

examination by any person or authority at any time, except by the elected Offices

once the international preliminary examination report has been established.

(2) Subject to the provisions of paragraph (1) and

Articles 36(1) and

(3)

and

37(3)(b)

, neither the

International Bureau nor the International Preliminary Examining Authority shall,

unless requested or authorized by the applicant, give information on the issuance

or non-issuance of an international preliminary examination report and on the

withdrawal or non-withdrawal of the demand or of any election.

35 U.S.C. 368

Secrecy of certain inventions; filing international applications in foreign

countries.

(a) International applications filed in the Patent and Trademark Office

shall be subject to the provisions of

chapter 17

.

(b) In accordance with

article 27(8)

of the treaty,

the filing of an international application in a country other than the United

States on the invention made in this country shall be considered to constitute the

filing of an application in a foreign country within the meaning of

chapter

17

, whether or not the United States is designated in that

international application.

(c) If a license to file in a foreign country is refused or if an

international application is ordered to be kept secret and a permit refused, the

Patent and Trademark Office when acting as a Receiving Office, International

Searching Authority, or International Preliminary Examining Authority, may not

disclose the contents of such application to anyone not authorized to receive such

disclosure.

Although most international applications are published soon after the

expiration of 18 months from the priority date,

PCT Article 21(2)(a)

, such publication

does not open up the Home Copy or Search Copy to the public for inspection, except as

provided in

37 CFR

1.14(g)

nary Examining Authority, may not

disclose the contents of such application to anyone not authorized to receive such

disclosure.

Although most international applications are published soon after the

expiration of 18 months from the priority date,

PCT Article 21(2)(a)

, such publication

does not open up the Home Copy or Search Copy to the public for inspection, except as

provided in

37 CFR

1.14(g)

.

37 CFR 1.14  Patent applications preserved in confidence.

*****

(g)

International applications.

(1) Copies of international application files for international

applications which designate the U.S. and which have been published in

accordance with

PCT Article 21(2)

, or

copies of a document in such application files, will be furnished in

accordance with

PCT Articles 30

and

38

and

PCT Rules 94.2

and

94.3

, upon written request including a showing that

the publication of the application has occurred and that the U.S. was

designated, and upon payment of the appropriate fee (see §

1.19(b)

), if:

(i) With respect to the Home Copy (the copy of the

international application kept by the Office in its capacity as the

Receiving Office, see

PCT Article

12(1)

), the international application was filed

with the U.S. Receiving Office;

(ii) With respect to the Search Copy (the copy of an

international application kept by the Office in its capacity as the

International Searching Authority, see

PCT Article

12(1)

), the U.S. acted as the International

Searching Authority, except for the written opinion of the

International Searching Authority which shall not be available until

the expiration of thirty months from the priority date; or

(iii) With respect to the Examination Copy (the copy of an

international application kept by the Office in its capacity as the

International Preliminary Examining Authority), the United States

acted as the International Preliminary Examining Authority, an

International Preliminary Examination Report has issued, and the

United States was elected.

piration of thirty months from the priority date; or

(iii) With respect to the Examination Copy (the copy of an

international application kept by the Office in its capacity as the

International Preliminary Examining Authority), the United States

acted as the International Preliminary Examining Authority, an

International Preliminary Examination Report has issued, and the

United States was elected.

(2) A copy of an English language translation of a publication of

an international application which has been filed in the United States

Patent and Trademark Office pursuant to

35 U.S.C. 154(d)(4)

will

be furnished upon written request including a showing that the publication

of the application in accordance with

PCT Article 21(2)

has

occurred and that the U.S. was designated, and upon payment of the

appropriate fee (§

1.19(b)(4)

).

(3) Access to international application files for international

applications which designate the U.S. and which have been published in

accordance with

PCT Article 21(2)

, or

copies of a document in such application files, will be permitted in

accordance with

PCT Articles 30

and

38

and PCT Rules 44

ter

.1,

94.2

and

94.3

, upon written

request including a showing that the publication of the application has

occurred and that the U.S. was designated.

(4) In accordance with

PCT Article 30

, copies

of an international application-as-filed under paragraph (a) of this section

will not be provided prior to the international publication of the

application pursuant to

PCT Article 21(2)

.

(5) Access to international application files under paragraphs

uding a showing that the publication of the application has

occurred and that the U.S. was designated.

(4) In accordance with

PCT Article 30

, copies

of an international application-as-filed under paragraph (a) of this section

will not be provided prior to the international publication of the

application pursuant to

PCT Article 21(2)

.

(5) Access to international application files under paragraphs

(a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be

permitted with respect to the Examination Copy in accordance with

PCT

Article 38

.

*****

37 CFR

1.14(g)

applies to international applications having an international

filing date on or after November 29, 2000. After publication of an application under

35 U.S.C.

122(b)

, the USPTO will make available copies of the application files

and also allow for access to those files in accordance with

37 CFR 1.14(a)

.

Therefore, after publication of an international application designating the U.S. under

PCT Article

21

, the USPTO will make available copies of, and allow access to,

those international application files which are kept in the USPTO (see

37 CFR 1.14(g)

).

37 CFR

1.14(g)(1)

sets forth those conditions upon which copies of

international application files may be provided to the public.

37 CFR 1.14(g)(1)(i)

and (ii) address the situation where the U.S. acted as the receiving Office and the

International Searching Authority, respectively. Under these provisions, copies of the Home

and Search Copies of the international file will be provided upon request. However, the

written opinion established by the International Searching Authority will not be available

until the expiration of 30 months from the priority date.

37 CFR

1.14(g)(1)(iii)

addresses the situation in which the U.S. acted as

the International Preliminary Examining Authority (IPEA), the U.S. was elected, and the

international preliminary examination report (IPER) has issued

upon request. However, the

written opinion established by the International Searching Authority will not be available

until the expiration of 30 months from the priority date.

37 CFR

1.14(g)(1)(iii)

addresses the situation in which the U.S. acted as

the International Preliminary Examining Authority (IPEA), the U.S. was elected, and the

international preliminary examination report (IPER) has issued.

PCT Rule 94.2

provides that after issuance of the IPER, the IPEA shall provide copies of any documents in

the examination file to the elected Offices upon request.

PCT Rule 94.3

permits

the elected Offices to provide access to any documents in its files after international

publication has occurred. Therefore, the USPTO acting in its capacity as an elected Office,

will provide a copy of the examination file in an international application to a third

party upon submission of a request complying with the requirements of

37 CFR

1.14(g)(1)(iii)

. Requests for copies of an international application

file under

37 CFR

1.14(g)(1)

must be in the form of a written request sent to the

International Patent Legal Administration and must include a showing that the international

application has been published and that the U.S. was designated. Such a showing should

preferably be in the form of the submission of a copy of the front page of the published

international application. Additionally, requests for copies of international application

files must also be accompanied by the appropriate fee (

37 CFR 1.19(b)

).

37 CFR

1.14(g)(2)

provides that copies of English language translations of

international applications, which were published in a non-English language and which

designated the U.S., and which have been submitted to the Office pursuant to

35 U.S.C.

154(d)(4)

, will also be available to the public. The USPTO will not

provide general notification to the public of the filing of English language translations

under

35 U.S.C.

154

. Under

35 U.S.C

English language translations of

international applications, which were published in a non-English language and which

designated the U.S., and which have been submitted to the Office pursuant to

35 U.S.C.

154(d)(4)

, will also be available to the public. The USPTO will not

provide general notification to the public of the filing of English language translations

under

35 U.S.C.

154

. Under

35 U.S.C. 154

, it is the responsibility

of the applicant to notify any possible infringers for the purposes of obtaining

provisional rights.

37 CFR

1.14(g)(3)

addresses access to the Home Copy and the Search Copy of

the international application. Access to the Examination Copy of the international

application is prohibited under

37 CFR

1.14(g)(5)

as required by

PCT Article 38

.

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