SIR Publication and Effect

(pre-2013-03-16) 37 CFR 1.297  Publication of statutory invention registration.

(a) If the request for a statutory invention registration is approved

the statutory invention registration will be published. The statutory invention

registration will be mailed to the requester at the correspondence address as

provided for in

§ 1.33(a)

. A notice of the

publication of each statutory invention registration will be published in the

Official Gazette.

(b) Each statutory invention registration published will include a

statement relating to the attributes of a statutory invention registration. The

statement will read as follows:

A statutory invention registration is not a

patent. It has the defensive attributes of a patent but does not have the

enforceable attributes of a patent. No article or advertisement or the like may

use the term patent, or any term suggestive of a patent, when referring to a

statutory invention registration. For more specific information on the rights

associated with a statutory invention registration see

35 U.S.C.

157

.

Published SIRs are sequentially numbered in a separate “H” series,

starting with number “H1”. For a description of the “kind codes” used on other documents

published by the U.S. Patent and Trademark Office, see

MPEP § 901.04(a)

.

In accordance with

pre-AIA 35 U.S.C. 157(c)

, a published

SIR will be treated the same as a U.S. patent for all defensive purposes, usable as a

reference as of its filing date in the same manner as a patent. A SIR is a “constructive

reduction to practice” under

pre-AIA 35 U.S.C. 102(g)

and “prior

art” under all applicable sections of

35 U.S.C. 102

including

35 U.S.C.

102(a)(2)

and

pre-AIA 35 U.S.C. 102(e)

. SIRs are

classified, cross-referenced, and placed in the search files, disseminated to foreign

patent offices, stored in U.S. Patent and Trademark Office computer data bases, made

available in commercial data bases, and announced in the

Official

Gazette

e-AIA 35 U.S.C. 102(g)

and “prior

art” under all applicable sections of

35 U.S.C. 102

including

35 U.S.C.

102(a)(2)

and

pre-AIA 35 U.S.C. 102(e)

. SIRs are

classified, cross-referenced, and placed in the search files, disseminated to foreign

patent offices, stored in U.S. Patent and Trademark Office computer data bases, made

available in commercial data bases, and announced in the

Official

Gazette.

The waiver of patent rights to the subject matter claimed in a statutory

invention registration takes effect on publication (

pre-AIA 37 CFR 1.293(c)

) and may affect

the patentability of claims in related applications without SIR requests, such as

divisional or other continuing applications, since the waiver of patent rights is effective

for all inventions claimed in the SIR and would effectively waive the right of the inventor

to obtain a patent on the invention claimed in the same application or on the same

invention claimed in any other application not issued before the publication date of the

SIR. If an application containing generic claims is published as a SIR, the waiver in that

application applies to any other related applications to the extent that the same invention

claimed in the SIR is claimed in the other application. Examiners should apply standards

similar to those applied in making “same invention” double patenting determinations to

determine whether a waiver by an inventor to claims in a SIR precludes patenting by the

same inventor to subject matter in any related application. If the same subject matter is

claimed in an application and in a published statutory invention registration naming a

common inventor, the claims in the application should be rejected as being precluded by the

waiver in the statutory invention registration. A rejection as being precluded by a waiver

in a SIR cannot be overcome by a terminal disclaimer

r to subject matter in any related application. If the same subject matter is

claimed in an application and in a published statutory invention registration naming a

common inventor, the claims in the application should be rejected as being precluded by the

waiver in the statutory invention registration. A rejection as being precluded by a waiver

in a SIR cannot be overcome by a terminal disclaimer.

The holder of a SIR will not be able to file a reissue application to

recapture the rights, including the right to exclude others from making, using, selling,

offering to sell, or importing the invention, that were waived by the initial publication

of the SIR.

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