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

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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
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USPTO Web site
Go to www.uspto.gov
Click on Patents
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USPTO Web site
Click on AIPA - American Inventors Protection
Act of 1999
Click on PBG - Final Rule (Patent Business Goals)
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AIPAWebpage
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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)

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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

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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

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Eighteen-Month Publication

• Also, provides, at the applicants 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)

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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

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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

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Nonpublication Request PTO/SB/35
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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

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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

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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

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Rescind NonpublicationRequestPTO/SB/36
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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
  

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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))

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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

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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

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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 USPTOs electronic search systems (image and
  full text searchable)

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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

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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)

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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.

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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
  USPTOs electronic filing system (EFS) in a
  timely manner

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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 applications actual filing
  date, or
• before the USPTO has started publication process

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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 applications 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)

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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

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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)

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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

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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

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Thank you