MPEP § 1123 — MPEP § 1123
Current through: 2022-07-01

1123-Rescission of a Nonpublication Request 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 1100 

 Section 1123 
 

 
 
 
 
 
 1123 Rescission of a Nonpublication Request [R-07.2015]

 
 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).
 

 (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).
 

 (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.
 

 
 

 
 

 
 

 
 *****

 

 
 37 CFR 1.213 Nonpublication request. 

 *****

 
 (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) . 
 

 
 

 
 *****

 

 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. 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. 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) .
 

 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) .
 

 [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 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:49:24