APLF.org
 AboutMembersEventsNewsContactJobs
Issue 92 | July 1, 2003
Clarifications to Publication Rescission and Foreign Filing Notice Practice
 On June 6, 2003, the United States Patent and Trademark Office (USPTO) published a Notice clarifying its position that filing a rescission under 35 U.S.C. § 122(b)(2)(B)(ii) of a nonpublication request is not itself a notice of foreign filing under 35 U.S.C. § 122(b)(2)(B)(iii). This latest notice supersedes the "Reminder that Rescission of a Nonpublication Request is Not Itself a Notice of Foreign Filing" which was published on May 6, 2003.

In summary, the latest Notice clarifies that, when an applicant makes a nonpublication request, and then
  • rescinds the nonpublication request before or on the date a counterpart application is filed in an eighteen-month publication country, the application will be treated as if the nonpublication request were never made.
  • subsequently files a counterpart application in an eighteen-month publication country and also files a notice of this foreign filing within forty-five days of the date such counterpart application was filed, the applicant is not required to rescind the nonpublication request.
  • subsequently files a counterpart application in an eighteen-month publication country before the nonpublication request is rescinded, the applicant must notify the USPTO of the foreign filing not later than forty-five days after the date such counterpart application was filed to avoid abandonment of the application.
Applicants may use USPTO Form PTO/SB/36 (revision April 2001 or later) to both rescind a nonpublication request and provide notice of foreign filing. Since a rescission of a nonpublication requests is NOT given the benefit of a certificate of mailing or transmission under 37 CFR 1.8, the USPTO is strongly advising applicants to simultaneously provide the notice of foreign filing when rescinding a nonpublication request in anticipation of filing a counterpart application in an eighteen-month publication country.

The sole remedy for restoring an application that is abandoned for failure to timely notify the USPTO of the filing of a counterpart application in an eighteen-month publication country is a Petition to Revive for "Unintentional" Delay under 37 CFR 1.137(b). Form PTO/SB/64a may be used for any such a Petition to Revive.

To discuss these issues further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 AboutMembersEventsNewsContactJobs