Rescission of a Nonpublication Request

35 U.S.C. 122

Confidential status of applications; publication of patent

applications

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after filing, the application shall not be published as provided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

(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).

ng 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.

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.

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37 CFR 1.213  Nonpublication request.

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est 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.

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37 CFR 1.213  Nonpublication request.

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(b) The applicant may rescind a nonpublication request at any time. A

request to rescind a nonpublication request under paragraph (a) of this section

must:

(1) Identify the application to which it is directed;

(2) State in a conspicuous manner that the request that the

application is not to be published under

35 U.S.C. 122(b)

is

rescinded; and

(3) Be signed in compliance with

§

1.33(b)

.

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An applicant may rescind a previously-filed nonpublication request at any

time. See

35 U.S.C.

122(b)(2)(B)(ii)

. Form PTO/SB/36 (revision April 2001 or later) may

be used to both rescind a nonpublication request and provide notice of foreign filing. The

form is reproduced in

MPEP §

1135

. If applicant makes a nonpublication request under

35 U.S.C.

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

and then rescinds the nonpublication request before

or on the date a foreign or international application (hereinafter “foreign filing” or

“counterpart application”) directed to the invention disclosed in the U.S. application

filed under

37 CFR

1.111(a)

) in the USPTO is filed in a foreign country, or under a

multilateral international agreement, that requires eighteen-month publication, the

nonpublication request under

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

will be

treated as annulled and the application will be treated as if the nonpublication request

was never made

on”) directed to the invention disclosed in the U.S. application

filed under

37 CFR

1.111(a)

) in the USPTO is filed in a foreign country, or under a

multilateral international agreement, that requires eighteen-month publication, the

nonpublication request under

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

will be

treated as annulled and the application will be treated as if the nonpublication request

was never made. Thus, if applicant filed a nonpublication request and then decided to file

a counterpart application, applicant must file either: (1) a request to rescind the

nonpublication request before filing the counterpart application; or (2) a notice of

foreign filing no later than 45 days after the filing date of the counterpart application,

to avoid abandonment of the application (

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

and

37 CFR

1.213(c)

).

The mere filing of a request under

37 CFR 1.213(b)

to rescind the

previously filed nonpublication request does not comply with the notice of foreign filing

requirement of

35 U.S.C.

122(b)(2)(B)(iii)

and

37 CFR 1.213(c)

(for applicants who

submitted a nonpublication request but before filing the request to rescind, also filed a

counterpart application in another country, or under a multilateral international

agreement, that requires eighteen-month publication of applications). Applicants are

strongly encouraged to provide a notice of foreign filing whenever rescinding a

nonpublication request in anticipation of filing a counterpart application in an

eighteen-month publication country. Form PTO/SB/36 (revision April 2001 or later) provides

both a rescission and notice of foreign filing. See

MPEP § 1135

. No benefit can be given to a

certificate of mailing or transmission under

37 CFR 1.8

on a request to rescind a

nonpublication request in determining whether there has been a rescission of a

nonpublication request

before or on

the date a counterpart

application is filed in an eighteen-month publication country

2001 or later) provides

both a rescission and notice of foreign filing. See

MPEP § 1135

. No benefit can be given to a

certificate of mailing or transmission under

37 CFR 1.8

on a request to rescind a

nonpublication request in determining whether there has been a rescission of a

nonpublication request

before or on

the date a counterpart

application is filed in an eighteen-month publication country. A rescission of a

nonpublication request is not a paper required to be filed in the USPTO as provided for in

37 CFR

1.8(a)

. Thus, the provisions of

37 CFR 1.8

by their terms do not apply

in this situation, and the USPTO must use the actual date of receipt in the USPTO as

defined in

37 CFR

1.6

as the date of the rescission to determine whether the

nonpublication request has been rescinded before or on the date of the filing of a

counterpart application such that the application may be considered an application in which

no nonpublication request under

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

was made.

Since a notice of foreign filing is required by the statute and

37 CFR 1.215(c)

,

the benefit of a certificate of mailing or transmission under

37 CFR 1.8

will be

given to a notice of foreign filing.

After either a rescission of a nonpublication request or a notice of

foreign filing is received by the Office, the Office will enter the rescission or notice of

foreign filing into the Office Pre-Examination System to schedule the application for

publication. A notice (e.g., a “Notice Regarding Rescission Of Nonpublication Request and

Notice of Foreign Filing”) should be sent to inform the applicant of the projected

publication date. The application will be published promptly after the expiration of a

period of 18 months from the earliest filing date for which a benefit is sought under title

35, United States Code, or as soon as practicable after mailing this notice. See

35 U.S.C.

122(b)(2)(B)(iv)

Of Nonpublication Request and

Notice of Foreign Filing”) should be sent to inform the applicant of the projected

publication date. The application will be published promptly after the expiration of a

period of 18 months from the earliest filing date for which a benefit is sought under title

35, United States Code, or as soon as practicable after mailing this notice. See

35 U.S.C.

122(b)(2)(B)(iv)

.

An applicant should not rescind a nonpublication request or provide a

notice of foreign filing unless a nonpublication request was actually made, because filing

a rescission when one is not needed leads to a waste of Office resources and may delay

prosecution in the application. Furthermore, filing a rescission of a nonpublication

request where a nonpublication request was not originally made may result in a reduction to

any patent term adjustment under

35 U.S.C. 154(b)

.

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