Eighteen-Month Publication of Patent Applications

35 U.S.C. 122

Confidential status of applications; publication of patent

applications.

*****

(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(A) An application shall not be published if that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

.

*****

37 CFR 1.211  Publication of applications.

(a) Each U.S. national application for patent filed in

the Office under

35 U.S.C. 111(a)

and each

international application in compliance with

35 U.S.C. 371

will be

published promptly after the expiration of a period of eighteen months from the

earliest filing date for which a benefit is sought under title 35, United States

Code, unless:

(1) The application is recognized by the Office as no longer

pending;

(2) The application is national security classified (see

§

5.2(c)

), subject to a secrecy order under

35

U.S.C. 181

, or under national security review;

(3) The application has issued as a patent in sufficient time

to be removed from the publication process; or

(4) The application was filed with a nonpublication request in

compliance with

§ 1.213(a)

.

recognized by the Office as no longer

pending;

(2) The application is national security classified (see

§

5.2(c)

), subject to a secrecy order under

35

U.S.C. 181

, or under national security review;

(3) The application has issued as a patent in sufficient time

to be removed from the publication process; or

(4) The application was filed with a nonpublication request in

compliance with

§ 1.213(a)

.

(b) Provisional applications under

35 U.S.C.

111(b)

shall not be published, and design applications under

35 U.S.C. chapter 16, international design applications under

35 U.S.C. chapter

38

, and reissue applications under 35 U.S.C. chapter 25

shall not be published under this section.

(c) An application filed under

35 U.S.C.

111(a)

will not be published until it includes the basic

filing fee (§

1.16(a)

or

(c)

) and any English

translation required by

§ 1.52(d)

. The Office may

delay publishing any application until it includes any application size fee

required by the Office under

§ 1.16(s)

or

§ 1.492(j)

,

a specification having papers in compliance with

§ 1.52

and

an abstract (

§

1.72(b)

), drawings in compliance with

§ 1.84

, a

“Sequence Listing” in compliance with

§§ 1.821

through

1.825

(if applicable) for an application filed before July

1, 2022, a “Sequence Listing XML” in compliance with

§§

1.831

through

1.835

(if applicable) for an

application filed on or after July 1, 2022, and the inventor's oath or declaration

or application data sheet containing the information specified in

§

1.63(b)

.

(d) The Office may refuse to publish an application, or to include a

portion of an application in the patent application publication (

§

1.215

), if publication of the application or portion thereof

would violate Federal or state law, or if the application or portion thereof

contains offensive or disparaging material.

on

or application data sheet containing the information specified in

§

1.63(b)

.

(d) The Office may refuse to publish an application, or to include a

portion of an application in the patent application publication (

§

1.215

), if publication of the application or portion thereof

would violate Federal or state law, or if the application or portion thereof

contains offensive or disparaging material.

(e) The publication fee set forth in

§ 1.18(d)

must be paid in each application published under this section before the patent

will be granted. If an application is subject to publication under this section,

the sum specified in the notice of allowance under

§ 1.311

will

also include the publication fee which must be paid within three months from the

date of mailing of the notice of allowance to avoid abandonment of the

application. This three-month period is not extendable. If the application is not

published under this section, the publication fee (if paid) will be refunded.

I.

IN GENERAL

With certain exceptions, nonprovisional utility and plant applications

for patent filed on or after November 29, 2000 are published promptly after the

expiration of a period of eighteen months from the earliest filing date for which a

benefit is sought under title 35, United States Code (eighteen-month publication or

pre-grant publication (PGPub)). See

35 U.S.C. 122(b)

. The Office will

generally publish:

(A) utility and plant applications filed under

35 U.S.C.

111(a)

on or after November 29, 2000; and

(B) nonprovisional applications which entered the national stage

after compliance with

35 U.S.C. 371

from an

international application under

35 U.S.C. 363

filed on or

after November 29, 2000 (regardless of whether the international application has

been published by the International Bureau (IB) under PCT Article 21 in English).

The Office will not publish the following applications under

35 U.S.C.

122(b)

:

(A) Provisional applications filed under

35 U.S.C.

111(b)

(for more information see subsection II

n

international application under

35 U.S.C. 363

filed on or

after November 29, 2000 (regardless of whether the international application has

been published by the International Bureau (IB) under PCT Article 21 in English).

The Office will not publish the following applications under

35 U.S.C.

122(b)

:

(A) Provisional applications filed under

35 U.S.C.

111(b)

(for more information see subsection II. EXCEPTIONS

below);

(B) Design applications filed under

35 U.S.C.

171

;

(C) International design applications filed under

35

U.S.C. 385

; and

(D) Reissue applications filed under

35 U.S.C.

251

(because reissue applications are not kept confidential

under

35 U.S.C.

122(a)

).

Applications will be published after the expiration of a period of

eighteen months from the earliest of: (1) the U.S. filing date; (2) the international

filing date; or (3) the filing date of an earlier application for which a benefit is

sought under

35 U.S.C.

119

,

120

,

121

,

365

, or

386

. Applicants are encouraged to

timely submit any desired priority and benefit claims to ensure that their applications

will be published on time and to avoid the need to file a petition to accept

unintentionally delayed priority or benefit claims under

37 CFR 1.55

or

1.78

and the surcharge set forth in

37 CFR

1.17(t)

. See

MPEP § 211.04

and

214.02

.

Applications are normally published based on the application as filed and certain

amendments. See

MPEP §

1121

. A proper continued prosecution application (CPA) for

utility or plant patent filed on or after November 29, 2000 will be published based upon

the application papers deposited on the filing date of the first prior application.

(Note: CPA practice has been eliminated as to utility and plant applications effective

July 14, 2003. See

MPEP § 201.06(d)

.) Since a request for

continued examination (RCE) under

37 CFR 1.114

is not the filing of a

new application, filing an RCE will not cause an application filed before November 29,

2000 to be published

lication papers deposited on the filing date of the first prior application.

(Note: CPA practice has been eliminated as to utility and plant applications effective

July 14, 2003. See

MPEP § 201.06(d)

.) Since a request for

continued examination (RCE) under

37 CFR 1.114

is not the filing of a

new application, filing an RCE will not cause an application filed before November 29,

2000 to be published. The Office will not mail a paper copy of the patent application

publication to the applicant, but will mail a notice to the applicant indicating that

the application has been published. See

MPEP § 1127

. Patent application

publications are available on the USPTO website (

www.uspto.gov

).

II.

EXCEPTIONS

An application will not be published if one of the following exceptions

as set forth in

37 CFR

1.211

applies:

(A) The application is recognized by the Office as no longer pending;

for information on express abandonment to avoid publication see

37 CFR

1.138(c)

and

MPEP § 1125

;

(B) The application is national security classified (see

37 CFR

5.2(c)

), subject to a secrecy order under

35 U.S.C.

181

, or under national security review;

(C) The application has issued as a patent in sufficient time to be

removed from the publication process; or

(D) The application was filed with a nonpublication request in

compliance with

37 CFR 1.213(a)

. See

MPEP §

1122

-

1124

.

The Office will not publish applications that are recognized as no

longer pending. See

37 CFR 1.211(a)(1)

. An application

is

not

"recognized by the Office as no longer pending" when the

period for reply (either the shortened statutory period for reply or the maximum

extendable period for reply) to an Office action has expired, but the Office has not yet

entered the change of status (to abandoned) of the application in the Office’s Patent

Data Portal (PDP) system and mailed a notice of abandonment. An application will remain

in the publication process until the Patent Data Portal system indicates that the

application is abandoned

eriod for reply or the maximum

extendable period for reply) to an Office action has expired, but the Office has not yet

entered the change of status (to abandoned) of the application in the Office’s Patent

Data Portal (PDP) system and mailed a notice of abandonment. An application will remain

in the publication process until the Patent Data Portal system indicates that the

application is abandoned. Once the Patent Data Portal system indicates that an

application is abandoned, the Office will attempt to remove the application from the

publication process and avoid dissemination of the application information.

Unless an applicant has received a notice of abandonment at least 4

weeks prior to the projected publication date, an applicant who wants to abandon the

application to avoid publication must file a petition under

37 CFR 1.138(c)

to

expressly abandon the application and avoid publication. See

MPEP § 1125

. An

applicant who seeks to avoid publication by permitting an application to become

abandoned (for failure to reply to an Office action) and passively waiting for the

Office to recognize that the application has become abandoned bears the risk that the

Office will not recognize that the application has become abandoned and change the

status of the application in the Patent Data Portal system in sufficient time to avoid

publication.

The Office will not publish applications that have issued as patents in

sufficient time to be removed from the publication process. See

37 CFR

1.211(a)(3)

. If the pre-grant publication process coincides with

the patent issue process, the Office will continue with the pre-grant publication

process until a patent actually issues. This is because there are many instances in

which the Office mails a notice of allowance in an application but the application does

not issue as a patent in regular course (e.g., abandonment due to failure to pay the

issue fee, or withdrawal from issue)

n process coincides with

the patent issue process, the Office will continue with the pre-grant publication

process until a patent actually issues. This is because there are many instances in

which the Office mails a notice of allowance in an application but the application does

not issue as a patent in regular course (e.g., abandonment due to failure to pay the

issue fee, or withdrawal from issue). Therefore, the Office will not discontinue the

pre-grant publication process until a patent has actually issued. Since the Office

cannot discontinue the pre-grant publication process during the last two to four weeks

of the publication process, this will result in a few applications being issued as

patents and subsequently being published as patent application publications.

The Office may refuse to publish an application, or to include a

portion of an application in the publication, if publication of the application or

portion thereof would violate Federal or state law, or if the application or portion

thereof contains offensive or disparaging material. See

37 CFR

1.211(d)

. The Office may require a substitute specification to

delete the portion of the application that would violate Federal or state law, or that

contains offensive or disparaging material.

Converting a nonprovisional application to a provisional application

will not avoid the publication of the nonprovisional application unless the request to

convert is recognized in sufficient time to permit the appropriate officials to remove

the nonprovisional application from the publication process. The Office cannot ensure

that it can remove an application from the publication process or avoid publication of

application information any time after the publication process for the application has

been initiated. Technical preparations for publication of an application generally begin

four months prior to the projected publication date. The projected publication date is

indicated on the filing receipt for the patent application.

III

emove an application from the publication process or avoid publication of

application information any time after the publication process for the application has

been initiated. Technical preparations for publication of an application generally begin

four months prior to the projected publication date. The projected publication date is

indicated on the filing receipt for the patent application.

III.

APPLICATION MUST BE COMPLETE

In accordance with

37 CFR 1.211(c)

, publication will

not occur or will be delayed in certain circumstances. The Office will not publish an

application until the application includes:

(A) the basic filing fee; and

(B) an English translation if the application is in a language other

than English.

The Office may delay publication until the application includes:

(A) any application size fee required by the Office under

37 CFR

1.16(s)

or

37 CFR 1.492(j)

;

(B) a specification in compliance with

37 CFR

1.52

;

(C) an abstract in compliance with

37 CFR

1.72(b)

;

(D) drawings (if any) in compliance with

37 CFR 1.84

;

(E) a “Sequence Listing” in compliance with

37 CFR 1.821

through

1.825

(if applicable) for an application filed before July

1, 2022;

(F) a “Sequence Listing XML” in compliance with

37

CFR 1.831

through

1.835

(if applicable) for an application filed on or after

July 1, 2022; and

(G) an oath or declaration or an application data sheet

containing the information specified in

37 CFR 1.63(b)

.

If an application does not contain the content specified in

37 CFR

1.211(c)

and papers or drawings of sufficient quality to create a

patent application publication by eighteen months from the earliest filing date for

which benefit is claimed, the Office will publish the application as soon as practical

after these deficiencies are corrected

containing the information specified in

37 CFR 1.63(b)

.

If an application does not contain the content specified in

37 CFR

1.211(c)

and papers or drawings of sufficient quality to create a

patent application publication by eighteen months from the earliest filing date for

which benefit is claimed, the Office will publish the application as soon as practical

after these deficiencies are corrected. For example, publication of the patent

application publication may be delayed if the application papers submitted on the filing

date of the application do not include the content needed (e.g., an abstract or the

information specified in

37 CFR 1.63(b)

in an oath or

declaration or an application data sheet) or the specification (including claims) or

drawings are not of sufficient quality to be used to create a patent application

publication. In such a situation, the Office will issue a preexamination notice

requiring a substitute specification or replacement drawings. The applicant’s reply

(e.g., substitute specification or replacement drawings) to the notice will be used for

creating the patent application publication. If the application on filing includes

papers that are of sufficient quality to create the publication, the Office will publish

the application using the originally filed application papers.

Applicants who attempt to delay publication by intentionally delaying

the submission of the application content necessary for publication may encounter a

reduction in any patent term adjustment under

35 U.S.C. 154(b)

. See

35 U.S.C.

154(b)(2)(C)(ii)

and

37 CFR

1.704(b)

.

IV.

PROJECTED PUBLICATION DATE

Once the application is complete, the Office will provide applicants

the projected publication date of the application on a filing receipt. The projected

publication date normally will be the later of: (1) eighteen months from the earliest

filing date claimed; or (2) fourteen weeks from the mailing date of the filing receipt.

The publication process takes about fourteen weeks

CTED PUBLICATION DATE

Once the application is complete, the Office will provide applicants

the projected publication date of the application on a filing receipt. The projected

publication date normally will be the later of: (1) eighteen months from the earliest

filing date claimed; or (2) fourteen weeks from the mailing date of the filing receipt.

The publication process takes about fourteen weeks. Publication occurs on Thursday of

each week.

Applicants should carefully and promptly review their filing receipts.

Applicants should promptly file a request for corrected filing receipt if the

information on the filing receipt needs to be corrected. In addition, applicants should

contact the Application Assistance Unit (see

MPEP § 1730

) if the projected

publication date is incorrect or if a projected publication date has been assigned to an

application that should not be published. Applicants should also promptly check any

priority or benefit claims provided on the filing receipt and timely file or correct any

priority or benefit claims if the filing receipt does not include the desired claims or

includes incorrect claims. If the information is incorrect, Applicants should promptly

file a request for corrected filing receipt to assist the Office in quickly processing

the change prior to export of the application to the publisher. This will avoid the need

to file a petition under

37 CFR 1.55

or

1.78

to accept

unintentionally delayed claims and the surcharge under

37 CFR

1.17

(t). See

MPEP § 211.04

and

214.02

.

Furthermore, if the corrections are not recognized by the Office before the technical

preparation for publication has begun, the Office cannot change the projected

publication date and include the corrections in the publication.

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