Public Nature of Patent Documents 35 U S

Public Nature of Patent Documents 35 U. S. C. § 122 • Patent applications “shall be kept in confidence. ” • But patent applications are published 18 months after the filing date, whether or not they may later issue. • A published application is “open to inspection by the public. ” (37 C. F. R. 1. 11; MPEP 103) – After publication, the patent’s file history is available on Public PAIR. (Some documents may be listed as NPL and will not be viewable until the patent issues. ) 10/13/08 JULIA KRIPKE - PUBLIC NATURE 1

Exceptions to Publication: 35 U. S. C. § 122(b) Applications are NOT published at 18 months if they are: – – – 10/13/08 No longer pending (i. e. , issued or abandoned) Subject to a secrecy order under 35 U. S. C. § 181 Provisional under 35 U. S. C. § 111(b) For a design patent filed under 35 U. S. C. § 171 Not the subject of an application filed in a foreign country that requires publication of applications 18 months after filing (35 U. S. C. § 122(b)(2)(B)) • Under this final exception, the applicant must make a non-publication request upon filing its application with the PTO. JULIA KRIPKE - PUBLIC NATURE 2

Why publish? • In the 1980 s and 1990 s, GATT (now WTO) and US groups, too, wanted HARMONY among world patent practices • The US used to keep patent applications secret until the patent issued. Most other countries, however, published applications after 18 months. • The publication rules were enacted as part of the American Inventors Protection Act of 1999 (AIPA), P. L. 106 -113, Title IV, §§ 4001 et seq. – The AIPA was enacted on November 29, 1999. – The publication rules are in Subtitle E, the Domestic Publication of Foreign Filed Patent Applications Act of 1999. 10/13/08 JULIA KRIPKE - PUBLIC NATURE 3

When did the PTO start publishing? • Under section 4508 of the AIPA, the new rules apply to applications filed one year after the enactment of the legislation (i. e. , November 29, 2000). • But the PTO published the first applications on March 15, 2001, which is only 4 --not 18 --months after November 29, 2000. • Explanation? Most likely, these “early” publications involved continuation, divisional, and continuation-in-part applications of applications filed prior to November 29, 2000, as well as voluntary publications. (PTO FAQ) 10/13/08 JULIA KRIPKE - PUBLIC NATURE 4