MPEP § 1122 — MPEP § 1122
Current through: 2022-07-01

1122-Requests for Nonpublication 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1100 

 Section 1122 
 

 
 
 
 
 
 1122 Requests for Nonpublication [R-07.2022]

 
 35 U.S.C. 122 
 Confidential status of applications; publication of patent
 applications. 

 *****

 
 (b) PUBLICATION.— 
 
 *****

 (2) EXCEPTIONS.— 
 
 *****

 (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 after filing, the application shall not be published as provided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 eighteen months after filing, the application will not be published under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 application is not to be published under 35 U.S.C. 122(b) ; 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 111(a) not be published by filing a nonpublication request under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.
 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:
 (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. 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. 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. 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. 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. 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. 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.
 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1101-Request for Statutory Invention Registration (SIR) 

 1102-1110-[Reserved] 

 1111-SIR Publication and Effect 

 1112-1119-[Reserved] 

 1120-Eighteen-Month Publication of Patent Applications 

 1121-Content of a Patent Application Publication 

 1122-Requests for Nonpublication 

 1123-Rescission of a Nonpublication Request 

 1124-Notice of Foreign Filing 

 1125-Express Abandonment to Avoid Publication 

 1126-Publication Fees 

 1127-Notice of Publication 

 1128-Availability of Published Applications 

 1129-Request for Early Publication 

 1130-Republication and Correction of Patent Application Publications 

 1131-[Reserved] 

 1132-Requests for Redacted Publication 

 1133-Voluntary Publication 

 1134-Third Party Inquiries and Correspondence in a Published Application 
 1134.01-Third Party Submissions Under 37 CFR 1.290 

 
 

 1135-PGPub Forms 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:32