Requests for Nonpublication

35 U.S.C. 122

Confidential status of applications; publication of patent

applications.

*****

(b) PUBLICATION.—

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(2) EXCEPTIONS.—

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(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after filing, the application shall not be published as provided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).

*****

37 CFR 1.213  Nonpublication request.

(a) If the invention disclosed in an application has not been and

will not be the subject of an application filed in another country, or under a

multilateral international agreement, that requires publication of applications

eighteen months after filing, the application will not be published under

35 U.S.C.

122(b)

and

§ 1.211

provided:

(1) A request (nonpublication request) is submitted with the

application upon filing;

(2) The request states in a conspicuous manner that the

application is not to be published under

35 U.S.C. 122(b)

;

(3) The request contains a certification that the invention

disclosed in the application has not been and will not be the subject of an

application filed in another country, or under a multilateral international

agreement, that requires publication at eighteen months after filing; and

(4) The request is signed in compliance with

§

1.33(b)

.

*****

If the invention disclosed in an application filed under

35 U.S.C.

111(a)

has not been and will not be the subject of a foreign or

international application filed in another country, or under a multilateral international

agreement, that requires publication of applications eighteen months after filing (e.g., a

counterpart PCT application), applicants may request that the application filed under

35 U.S.C.

111(a)

not be published by filing a nonpublication request under

37 CFR

1.213(a)

. The Office will not publish an application filed under

35 U.S.C

on filed in another country, or under a multilateral international

agreement, that requires publication of applications eighteen months after filing (e.g., a

counterpart PCT application), applicants may request that the application filed under

35 U.S.C.

111(a)

not be published by filing a nonpublication request under

37 CFR

1.213(a)

. The Office will not publish an application filed under

35 U.S.C.

111(a)

with a nonpublication request in compliance with the

following:

(A) The request for nonpublication under

37 CFR 1.213(a)

must be submitted with the application

upon filing

(this is a statutory requirement and cannot be waived);

(B) The request for nonpublication must state in a

conspicuous

manner that the application is not to be published under

35 U.S.C.

122(b)

(see Form PTO/SB/35 in

MPEP § 1135

);

(C) The request must contain a certification that the invention

disclosed in the application

has not been and will not

be the subject of

an application filed in another country, or under a multilateral international

agreement, that requires eighteen-month publication. Before making the certification,

the person who signs the certification must make an

actual inquiry

to determine whether the certification under

35 U.S.C.

122(b)(2)(B)(i)

and

37 CFR 1.213(a)(3)

can be

appropriately made (see I. REQUIREMENTS PRIOR TO FILING A NONPUBLICATION REQUEST,

below); and

(D) The request is signed in compliance with

37 CFR

1.33(b)

.

If applicant filed a nonpublication request and later decides to file a

counterpart foreign or international application in another country, or under a

multilateral agreement, that requires eighteen-month publication, applicant must either:

be

appropriately made (see I. REQUIREMENTS PRIOR TO FILING A NONPUBLICATION REQUEST,

below); and

(D) The request is signed in compliance with

37 CFR

1.33(b)

.

If applicant filed a nonpublication request and later decides to file a

counterpart foreign or international application in another country, or under a

multilateral agreement, that requires eighteen-month publication, applicant must either:

(1) rescind the nonpublication request before filing such foreign or international

application; or (2) notify the Office of such filing no later than 45 days after the filing

date of the counterpart foreign or international application. See

MPEP §§ 1123

and

1124

.

I.

REQUIREMENTS PRIOR TO FILING A NONPUBLICATION REQUEST

A nonpublication request is not appropriate unless the person who is

signing the nonpublication request has made an actual inquiry consistent with the

requirements of

37 CFR

11.18(b)

to determine that:

(A) The application under

35 U.S.C. 111(a)

has not been

the subject of a foreign or international application

filed in another country, or under a multilateral international agreement, that

requires publication of applications at eighteen months after filing

(

e.g.,

a counterpart PCT application); and

(B) The applicant’s intent at the time the nonpublication request is

being filed is that the application under

35 U.S.C.

111(a)

will not be

the subject of a foreign or international application

filed in another country, or under a multilateral international agreement, that

requires publication of applications at eighteen months after filing.

Only when both conditions are satisfied, can applicants file a

nonpublication request under

37 CFR 1.213(a)

. A nonpublication

request is not appropriate if applicants have already filed a counterpart foreign or

international application in another country, or under a multilateral international

agreement, that requires publication of applications at eighteen months after filing

onths after filing.

Only when both conditions are satisfied, can applicants file a

nonpublication request under

37 CFR 1.213(a)

. A nonpublication

request is not appropriate if applicants have already filed a counterpart foreign or

international application in another country, or under a multilateral international

agreement, that requires publication of applications at eighteen months after filing. A

nonpublication request is not proper even if the foreign or international application is

abandoned before the foreign or international application is published.

A nonpublication request also is not appropriate if the applicant has

not yet decided whether to file a counterpart application in a foreign country, or under

a multilateral international agreement, that requires publication of applications at

eighteen months after filing. A certification under

37 CFR 1.213(a)(3)

cannot be made

based on a lack of knowledge of the applicant’s plans concerning the filing of any

counterpart application that would be subject to eighteen-month publication or the

applicant’s past practices or tendencies with respect to the filing of foreign

counterpart applications. The fact that a particular applicant has filed counterpart

applications for fewer than fifty percent of its U.S. applications is not alone an

adequate basis for filing all or any of the U.S. applications with a nonpublication

request. The applicant must have an affirmative intent not to file a counterpart

application, and not just the absence of any intent or plan concerning the filing of any

counterpart application in a foreign country, or under a multilateral international

agreement, that requires publication of applications at eighteen months after filing. A

nonpublication request is only appropriate if the applicant’s intent at the time the

nonpublication request is being filed is not to file a counterpart application in a

foreign country, or under a multilateral international agreement, that requires

publication of applications at eighteen months after filing.

II

agreement, that requires publication of applications at eighteen months after filing. A

nonpublication request is only appropriate if the applicant’s intent at the time the

nonpublication request is being filed is not to file a counterpart application in a

foreign country, or under a multilateral international agreement, that requires

publication of applications at eighteen months after filing.

II.

FILING A NONPUBLICATION REQUEST

Applicants should use the format set forth in form PTO/SB/35,

Nonpublication Request under

35 U.S.C. 122(b)(2)(B)(i)

, to ensure

that the certification includes the proper language required by the statute and the

request is stated in a conspicuous manner. Form PTO/SB/35 is available from the USPTO

website (

www.uspto.gov

), and

is reproduced in

MPEP

§ 1135

. A nonpublication request that does not include the

language required by

35 U.S.C. 122(b)(2)(B)(i)

(i.e., 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”) will

not

be

accepted. A request for nonpublication may not be recognized unless it is conspicuous.

See

37 CFR

1.213(a)(2)

. Providing text as one paragraph among numerous other

paragraphs with no highlighting of the request for nonpublication is not conspicuous,

and thus the Office’s assignment of a publication date would be appropriate.

A nonpublication request must be filed upon the filing of the

application. This is a statutory requirement and cannot be waived. For example, a

nonpublication request filed with a request under

37 CFR

1.53(c)(3)

to convert a provisional application to a

nonprovisional application will not be accepted as timely filed because the

nonprovisional application would be accorded the original filing date of the provisional

application if the request to convert is granted. The nonpublication request must also

be included with the application papers

onpublication request filed with a request under

37 CFR

1.53(c)(3)

to convert a provisional application to a

nonprovisional application will not be accepted as timely filed because the

nonprovisional application would be accorded the original filing date of the provisional

application if the request to convert is granted. The nonpublication request must also

be included with the application papers. The nonpublication request cannot be filed

separately on the same date as the filing date of the application (e.g., the

nonpublication request is filed in a different Priority Mail

Express

®

package than the package that contains the

application). If the Office mistakenly accepts an improper nonpublication request,

applicants should rescind the request immediately. In addition to rescinding the

improper nonpublication request, applicants may contact the Application Assistance Unit.

See

MPEP §

1730

for contact information.

When the Office recognizes the nonpublication request, the filing

receipt will

not

include a projected publication date. If

applicant includes a nonpublication request as specified by

35 U.S.C.

122(b)(2)(B)(i)

and the filing receipt reflects a projected

publication date, applicant should promptly contact the Office and determine whether the

nonpublication request was overlooked.

III.

INAPPROPRIATE NONPUBLICATION REQUEST

If prior to filing a U.S. application under

35 U.S.C.

111(a)

, applicants have filed a counterpart foreign or

international application in a foreign country, or under a multilateral international

agreement, that requires publication of applications 18 months after filing, a

nonpublication request would not be appropriate in the U.S. application. If applicants

filed a nonpublication request in a U.S. application that claims the benefit to an

earlier foreign or international application, the Office will not accept the

nonpublication request and will assign a projected publication date. The applicant will

be notified that the certification is inconsistent with the priority claim

ation request would not be appropriate in the U.S. application. If applicants

filed a nonpublication request in a U.S. application that claims the benefit to an

earlier foreign or international application, the Office will not accept the

nonpublication request and will assign a projected publication date. The applicant will

be notified that the certification is inconsistent with the priority claim. The notice

will provide a non-extendable time period of 30 days from the mail date of the notice

for applicant to provide a satisfactory explanation as to how the certification

submitted is valid in light of the priority claim. If applicants fail to provide a

satisfactory explanation, the Office will publish the U.S. application.

If an applicant files a PCT application, abandons the PCT application

before the International Bureau publishes the PCT application, and thereafter files a

corresponding U.S. application under

35 U.S.C. 111(a)

with a

non-publication request under

37 CFR 1.213

, the nonpublication

request is improper. The mere filing of the PCT application precludes the proper use of

a nonpublication request, since the invention disclosed in the U.S. application was the

subject of an application that was filed under an international agreement requiring

publication at 18 months (the PCT application).

35 U.S.C. 122(b)(2)(B)(i)

states

that an application will not be published “[i]f 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 trigger in the statute is not whether the other application will be

published, but rather the trigger is the act of filing where eighteen-month publication

of patent applications is required

n 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 trigger in the statute is not whether the other application will be

published, but rather the trigger is the act of filing where eighteen-month publication

of patent applications is required. Abandonment of the foreign application, or the

application under a multilateral international agreement, prior to foreign publication

at 18-months has no bearing on the propriety of requesting nonpublication of the U.S.

application.

Where a foreign or PCT application is filed first, and a U.S.

application is filed thereafter with an (improper) nonpublication request, the Office

will not consider the U.S. application as abandoned for having made the nonpublication

request. This is because the statute only provides for an application to be regarded as

abandoned when the applicant fails to notify the Office within 45 days of a

subsequently

filed application that is directed to the same

subject as the invention of the U.S. application in another country, or under a

multilateral international agreement, that requires eighteen-month publication of

applications.

35

U.S.C. 122(b)(2)(B)(iii)

does not apply to the situation where the

applicant has made an improper certification subsequent to the foreign filing. A

petition to revive under

37 CFR 1.137(a)/(f)

is inappropriate

and not necessary in the above-noted situation because the U.S. application is pending

(unless the application is abandoned for other reasons). If a petition to revive under

37 CFR

1.137(a)/(f)

is filed, the Office will dismiss the petition as

inappropriate but retain the petition fee because the Office was required to evaluate

the merits of the petition before being able to determine that the petition was not

appropriate.

Applicants and their representatives should make sure that the

certification is proper before signing and filing it with the Office

to revive under

37 CFR

1.137(a)/(f)

is filed, the Office will dismiss the petition as

inappropriate but retain the petition fee because the Office was required to evaluate

the merits of the petition before being able to determine that the petition was not

appropriate.

Applicants and their representatives should make sure that the

certification is proper before signing and filing it with the Office. While applicants

should rescind any improper nonpublication request as soon as possible,

35 U.S.C.

122(b)(2)(B)(i)-(iv)

does not include any provision for

“correction” of an improper certification. Any applicant or applicant’s representative

who makes a false statement (e.g., an improper certification) may be in violation of

37 CFR

11.18(b)

. In addition, false statements by registered patent

practitioners may also violate other Disciplinary Rules (see 37 CFR Part 11).

While applicant cannot undo the fact that an improper certification was

made, any applicant who has made such a mistake should promptly file a rescission of the

nonpublication request and note that the original certification was improper.

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