# Presentation: 127674

## Implementation of the The Eighteen-Month Publication Provisions of the American Inventors Protection Act of 1999 (Public Law 106-113)

- Presented by
- The Office of Patent Legal Administration
- Joni Chang, Legal Advisor, (703) 308-3858
- Mark Polutta, Legal Advisor, (703) 308-8122

## USPTO Web site

- Click on:
- Patents

- Go to:
- 	www.uspto.gov

## USPTO Web site

- Click on:
- AIPA - American Inventors Protection Act of 1999

- Click on:
- PBG - Final Rule (Patent Business Goals)

## AIPAWebpage

## Current patent statute (35 U.S.C.) and rules (37 CFR)

**On the AIPA or PBG Webpage:**
- Patent statutes (35 U.S.C.)
- 		click on	“Laws, Consolidated Patent
-  		 		 (December 14, 2000)”
- Patent rules (37 CFR)
- 		click on	“Rules, Consolidated Patent
- 				 (December 18, 2000)”

## Eighteen-Month Publication

- Entitled “Domestic Publication of Patent Applications Published Abroad”
- 35 U.S.C. § 122(b) requires publication of applications at eighteen months from the earliest filing date claimed under title 35
- 	eighteen-month date measured from the **earliest** filing date claimed under 35 U.S.C. §§ 119(a)-(d), (e), 120, 121, or 365

## Eighteen-Month Publication

- Applies to applications filed on or after  November 29, 2000
- A CPA filed on/after November 29, 2000 is subject to publication
- Filing an RCE on/after November 29, 2000 in an application filed before November 29, 2000 does not make the application subject to publication
- An international (PCT) application entering the national stage under 35 U.S.C. § 371 is subject to publication if the PCT application was filed (35 U.S.C. § 363) on or after November 29, 2000

## Eighteen-Month Publication

- Also, provides, at the applicant’s request, for publication
- of an application pending on November 29, 2000 (voluntary publication)
- of an application earlier than at eighteen months from the earliest filing date claimed under title 35 (early publication)

## Eighteen-Month Publication

*Exceptions to eighteen-month publication:*
- Applications no longer pending (*e.g.,* abandoned)
- File petition under 37 CFR 1.138(c) to expressly abandon application to avoid publication
- Applications under secrecy order or whose disclosure would be detrimental to national security
- Provisional applications
- Design applications

## Eighteen-Month Publication

*Exceptions to eighteen-month publication:*
- An applicant may request that an application not be published if
- the applicant certifies that invention **has not been** and **will not be** the subject of an application ***filed*** in another country (or under international agreement) that requires eighteen-month publication
- The request must be made **upon filing** (required by statute)
- The request must be **conspicuous**
- See PTO form PTO/SB/35

## Nonpublication Request PTO/SB/35

## Eighteen-Month Publication

- To avoid publication of an application filed without a proper request for non-publication,
- Applicant may file:
- A continuation (not a CPA) under 37 CFR 1.53(b) with a request for nonpublication (PTO/SB/35); and
- A petition under **37 CFR 1.138(c)** for express abandonment to avoid publication of the patent application with petition fee to **Box PGPUB-ABD** in the currently pending application
- The petition will be granted when it is recognized in sufficient time (normally, 4 weeks prior to projected publication date) to avoid publication
- If the petition is dismissed because the publication process cannot be stopped, the application will NOT be abandoned

## Eighteen-Month Publication

- To avoid publication of an application filed without a proper request for non-publication,
- Applicant may also file:
- A petition to convert the non-provisional application to a provisional application under 1.53(c)(2); and
- A (second) non-provisional application with a non-publication request (PTO/SB/35) claiming the benefit of the provisional application (resulted from the conversion) under 35 U.S.C. 119(e)
- Patent Term will not be affected compare to abandonment in favor of a continuing application
- The provisional application resulted from the conversion cannot claim the benefit of another prior application

## Eighteen-Month Publication

*Exceptions to eighteen-month publication:*
- The “nonpublication” request may be rescinded at any time (see PTO form PTO/SB/36)
- If an application is subsequently filed in another country (or under international agreement) that requires eighteen-month publication
- the applicant must notify the USPTO within forty-five days **or the application will become abandoned **
- application may be revived if the delay in providing notice was unintentional

## Rescind NonpublicationRequestPTO/SB/36

## Eighteen-Month Publication

*Priority/continuity claims:*
- 35 U.S.C. § 119(b) (foreign priority),
- 	35 U.S.C. § 119(e) (domestic priority - provisional), and
- 	 35 U.S.C. § 120 (domestic continuity - nonprovisional) have been amended to:
- Provide that the USPTO may set time periods within which priority/continuity claims must be filed or are waived
- Priority/continuity claims must be timely filed to permit publication as close as possible to eighteen months from earliest claimed filing date

## Eighteen-Month Publication

*Priority/continuity claims:*
- The period set in 37 CFR 1.55 and 1.78 for presenting claims under 35 U.S.C. §§ 119(b), (e), 120, 121, or 365 is the later of:
**sixteen** months from the claimed priority date, or
**four** months from the application filing date
- 	(_cf_. PCT Rule 26bis.1(a))
- 35 U.S.C. §§ 119 and 120 also permit the USPTO to accept unintentionally delayed priority/ continuity claims (subject to surcharge in 1.17(t))

## Unintentionally Delayed Priority Claims(37 CFR §§ 1.55 and 1.78)

- Priority claims filed after the required time period may be accepted if filed with a grantable petition to accept an unintentionally delayed priority claim
- A grantable petition requires:
- the surcharge under 37 CFR 1.17(t); and
- a statement that the entire delay between the date the claim was due under 37 CFR 1.55(a)(1) and the date the claim was filed was unintentional
- Such petitions will be decided by the Office of Petitions

## Eighteen-Month Publication

*Priority/continuity claims:*
- A translation is no longer required to be filed in non-English language provisional application
- 37 CFR 1.52(d) and 1.78(a)(5) instead require that any nonprovisional application claiming benefit of a non-English language provisional application contain a translation of the provisional application
- Allows filing of a translation to be deferred until a nonprovisional application claiming benefit of the non-English language provisional is actually filed

## Eighteen-Month Publication

*Publication process:*
- Patent application publication is similar to a patent in format and content
- front page with title, bibliographic data, abstract, drawing figure, and IPC/US classifications
- specification (including claims) in a two column arrangement
- Patent application publications are available on the USPTO’s electronic search systems (image and full text searchable)

## Slide 21

## Eighteen-Month Publication

*Publication process:*
- A patent application publication will differ from a patent in that:
- a patent application publication does not list cited prior art
- a patent application publication will contain the correspondence address
- there is no Official Gazette for patent application publications

## Eighteen-Month Publication

*Publication process:*
- Content based on the application at time of release to Technology Center (TC) for examination (basically “as-filed”),
- except that preliminary amendments are not be included
- unless applicant submits an EFS copy of the application for publication (as discussed below)

## Eighteen-Month Publication

*Publication process:*
- USPTO must require that each utility and plant application be in condition for publication when released to TC for examination
- contains the filing fee and an executed oath/declaration
- specification of sufficient quality for optical character recognition (OCR) conversion of image to text
- title and abstract in compliance with 37 CFR 1.72
- drawings acceptable for use in the patent application publication as a prior art document
- drawings may be “acceptable” even if designated as “informal” by the applicant
- sequence listing CRF in compliance with 37 CFR 1.821 *et seq*.

## Eighteen-Month Publication

*Publication process:*
- If applicant wants the patent application publication to reflect the application as amended during examination (or with preliminary amendments),the applicant _must_ file a copy of the application (as amended) in compliance with the USPTO’s electronic filing system (EFS) in a timely manner

## Eighteen-Month Publication

*Publication process:*
- The patent application publication will be based upon the EFS copy of the application if the EFS copy is filed:
- within the later of:
- _fourteen months_ from the earliest claimed priority date, or
- _one month_ from the application’s actual filing date, or
- before the USPTO has started publication process

## Eighteen-Month Publication

*Publication process:*
- Since a confirmation number is needed to file an EFS copy
- 	The patent application publication will also be based upon the EFS copy if it is filed within one month of the mail date of the first Filing Receipt indicating the application’s confirmation number
*See* *Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes*, 1241 *Off. Gaz. Pat. Office* 97 (Dec. 26, 2000)

## Eighteen-Month Publication

*Publication process:*
- The applicant must also file an EFS copy of the application:
- for “voluntary” publication of an application pending on November 29, 2000
- for publication of an application as redacted
- for republication of an application

## Eighteen-Month Publication

*Drawing issues:*
- If drawings are “acceptable,” applicant may submit better quality drawings for publication:
- with an EFS copy of the application, or
- with a petition under 37 CFR 1.182 (and $130 fee) within the later of fourteen months from the earliest claimed priority date or one month from the actual filing date of the application
- submit to Box PGPUB Drawings
*See* *Drawings in Patent Application Publications and Patents*, 1242 *Off. Gaz. Pat. Office* 114 (Jan. 16, 2001)

## Eighteen-Month Publication

*Drawing issues:*
- Drawing objections in a utility or plant application will not be held in abeyance
- Regardless of whether the application was filed before, on, or after November 29, 2000
- A request to hold a drawing objection in abeyance will not be considered a *bona fide* attempt to advance prosecution (37 CFR 1.135(c))
- A reply to an action/notice must correct any drawing objection unless the action/notice expressly permits the objection to be held in abeyance
- If the reply does not correct the objection, applicant will have the remainder of the originally set period (and **not a new period**) within which to correct the drawing objection

## Eighteen-Month Publication

- _Access_*:*
- Applications are no longer maintained in confidence once they are published
- USPTO will **not** provide direct physical access to a pending published application
- USPTO will provide (for a fee) a copy of the file wrapper and content of a published application
- The fee is $200 for the first 400 pages and $40 for each additional 100 pages

## Thank you