MPEP § 1124 — MPEP § 1124
Current through: 2022-07-01

1124-Notice of Foreign Filing 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1100 

 Section 1124 
 

 
 
 
 
 
 1124 Notice of Foreign Filing [R-07.2022]

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

 *****

 
 (b) PUBLICATION.— 
 
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 (2) EXCEPTIONS.— 
 
 *****

 (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).
 

 
 

 
 

 
 

 
 *****

 

 
 37 CFR 1.213 Nonpublication request. 

 *****

 
 (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. 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. 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. 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. 
 

 
 

 (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.
 

 
 *****

 

 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.
 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.
 

 [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