Notice of Foreign Filing

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)

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(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).

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37 CFR 1.213  Nonpublication request.

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(c) If an applicant who has submitted a nonpublication request under

paragraph (a) of this section subsequently files an application directed to the

invention disclosed in the application in which the nonpublication request was

submitted in another country, or under a multilateral international agreement,

that requires publication of applications eighteen months after filing, the

applicant must notify the Office of such filing within forty-five days after the

date of the filing of such foreign or international application. The failure to

timely notify the Office of the filing of such foreign or international

application shall result in abandonment of the application in which the

nonpublication request was submitted (

35 U.S.C. 122(b)(2)(B)(iii)

).

Applicants must timely file a notice of foreign filing to avoid

abandonment of a U.S

y-five days after the

date of the filing of such foreign or international application. The failure to

timely notify the Office of the filing of such foreign or international

application shall result in abandonment of the application in which the

nonpublication request was submitted (

35 U.S.C. 122(b)(2)(B)(iii)

).

Applicants must timely file a notice of foreign filing to avoid

abandonment of a U.S. application if:

(A) applicant filed a nonpublication request in the U.S. application

filed under

35 U.S.C. 111(a)

(see

MPEP § 1122

);

(B) applicant subsequently filed a foreign or international application

directed to the invention disclosed in the U.S. application in a foreign country, or

under a multilateral international agreement, that requires publication of

applications 18 months after filing (foreign filing or counterpart application); and

(C) applicant did not rescind the nonpublication request before filing

the foreign or international application (see

MPEP § 1123

).

I.

NOTICE OF FOREIGN FILING REQUIRED WITHIN 45 DAYS

The notice of foreign filing must be filed not later than 45 days after

the filing date of the counterpart application. The requirement for notice of foreign

filing is set forth in

35

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

which provides that an applicant who has

made a nonpublication request under

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

in a U.S.

application filed under

35 U.S.C. 111(a)

, but who subsequently

files an application in a foreign country or under a multilateral international agreement

that requires eighteen-month publication, must notify the USPTO of the foreign filing not

later than forty-five days after the date of such foreign filing. 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

.

35 U.S.C.

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

further provides that failure of the applicant to

provide the required notice within this forty-five (45) day period shall result in

abandonment of the application

he date of such foreign filing. 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

.

35 U.S.C.

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

further provides that failure of the applicant to

provide the required notice within this forty-five (45) day period shall result in

abandonment of the application. Accordingly, if at the time the foreign filing is made, the

applicant still has an operative nonpublication request (

i.e.,

the

applicant has not rescinded the nonpublication request), a notice of foreign filing must be

made within 45 days of the foreign filing or the U.S. application with the nonpublication

request will become abandoned.

Since the notice of foreign filing is required by the statute, the benefit

of a certificate of mailing or transmission under

37 CFR 1.8

will be given to a notice of

foreign filing. See

37

CFR 1.8(a)

. Form PTO/SB/36 includes a certificate of mailing. If the

end of the 45 day period falls on a Saturday, Sunday or Federal holiday within the District

of Columbia, a notice of foreign filing filed on the next succeeding secular or business

day is timely. See

35

U.S.C. 21(b)

.

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)

.

II

onpublication 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)

.

II.

ABANDONMENT FOR FAILURE TO PROVIDE TIMELY NOTICE

37 CFR 1.137  Revival of abandoned application, terminated reexamination proceeding, or

lapsed patent

(a)

Revival on the basis of unintentional delay.

If the delay in

reply by applicant or patent owner was unintentional, a petition may be filed

pursuant to this section to revive an abandoned application or a reexamination

prosecution terminated under § 1.550(d) or § 1.957(b) or limited under §

1.957(c).

(b)

Petition requirements.

A grantable petition pursuant to this

section must be accompanied by:

(1) The reply required to the outstanding Office action

or notice, unless previously filed;

(2) The petition fee as set forth in §

1.17(m)

;

(3) Any terminal disclaimer (and fee as set forth in §

1.20(d)

) required pursuant to paragraph (d) of

this section; and

(4) A statement that the entire delay in filing the

required reply from the due date for the reply until the filing of a

grantable petition pursuant to this section was unintentional. The

Director may require additional information where there is a question

whether the delay was unintentional.

l disclaimer (and fee as set forth in §

1.20(d)

) required pursuant to paragraph (d) of

this section; and

(4) A statement that the entire delay in filing the

required reply from the due date for the reply until the filing of a

grantable petition pursuant to this section was unintentional. The

Director may require additional information where there is a question

whether the delay was unintentional.

(c)

Reply.

In an application abandoned under § 1.57(a), the

reply must include a copy of the specification and any drawings of the

previously filed application. In an application or patent abandoned for failure

to pay the issue fee or any portion thereof, the required reply must include

payment of the issue fee or any outstanding balance. In an application

abandoned for failure to pay the publication fee, the required reply must

include payment of the publication fee. In a nonprovisional application

abandoned for failure to prosecute, the required reply may be met by the filing

of a continuing application. In a nonprovisional utility or plant application

filed on or after June 8, 1995, abandoned after the close of prosecution as

defined in § 1.114(b), the required reply may also be met by the filing of a

request for continued examination in compliance with § 1.114.

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(f)

Abandonment for failure to notify the Office of a foreign

filing:

A nonprovisional application abandoned pursuant to

35 U.S.C.

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

for failure to timely notify the Office

of the filing of an application in a foreign country or under a multinational

treaty that requires publication of applications eighteen months after filing,

may be revived only pursuant to this section. The reply requirement of

paragraph (c) of this section is met by the notification of such filing in a

foreign country or under a multinational treaty, but the filing of a petition

under this section will not operate to stay any period for reply that may be

running against the application.

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35 U.S.C

ion of applications eighteen months after filing,

may be revived only pursuant to this section. The reply requirement of

paragraph (c) of this section is met by the notification of such filing in a

foreign country or under a multinational treaty, but the filing of a petition

under this section will not operate to stay any period for reply that may be

running against the application.

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35 U.S.C.

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

provides that failure of the applicant to

provide the required notice of foreign filing within 45 days of the subsequent filing of

a counterpart application shall result in abandonment of the application. When an

application is abandoned by the operation of

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

,

applicant’s sole remedy to restore the application to pending status is by filing a

petition under

37 CFR

1.137

to revive the abandoned application on the basis of

unintentional delay. See

37 CFR 1.137(f)

. By statute, such a

petition to revive requires payment of the petition fee specified in

37 CFR

1.17(m)

(

35 U.S.C. 41(a)(7)

), and that the

delay in submitting the notice of foreign filing was unintentional. Form PTO/SB/64a may

be used for such a petition to revive. See also

MPEP § 711.03(c)

. In addition, if,

after filing a counterpart application, an applicant merely rescinds a nonpublication

request but does not file a notice of foreign filing within forty-five days of the

subsequent filing of a counterpart application, applicant must file a petition under

37 CFR

1.137

to revive the abandoned U.S. application (

37 CFR 1.137(f)

).

Abandonment occurs by operation of the statute, and the Office is

unlikely to recognize when applicant has filed a counterpart application in a foreign

country or under a multilateral agreement contrary to their certification to the Office.

The Office would not be able to change the status of the application from pending to

abandoned in the Patent Data Portal system and send applicant a notice of abandonment

occurs by operation of the statute, and the Office is

unlikely to recognize when applicant has filed a counterpart application in a foreign

country or under a multilateral agreement contrary to their certification to the Office.

The Office would not be able to change the status of the application from pending to

abandoned in the Patent Data Portal system and send applicant a notice of abandonment.

As a result, if applicant failed to file a notice of foreign filing when it was

required, prosecution of the application will continue and the application may issue as

a patent, even though the application has become abandoned by operation of the statute.

Applicants who determine that a required notice of foreign filing was not timely

provided should promptly file a petition to revive under

37 CFR 1.137

. See

37 CFR

1.137(f)

. The reply requirement of

37 CFR 1.137(c)

is

met by the notification of the filing in a foreign country or under a multinational

treaty, but the filing of a petition to revive will not operate to stay any period for

reply that may be running against the application.

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