In a post back in June, I discussed how many filing errors/omissions in new, electronically filed applications may be corrected by a follow up submission on the same day. Not every omission may be corrected this way, however. Since my June post on the correction of filings, I have received several emails inquiring about the exceptions – examples of filing errors/omissions that are not correctable by a follow up submission.
As a general rule, the omission of any document that is required by Rule to be submitted with a new application cannot be corrected with a follow up submission. Perhaps the most common examples are nonpublication requests.
This request, regardless of the manner in which it is made, must be submitted with the application upon filing. See 37 CFR 1.213(a)(1).
To correct the omission of a nonpublication request, the USPTO suggests filing: (1) a new application with a nonpublication request; and (2) a petition for express abandonment to avoid publication under 37 CFR 1.138(c) in sufficient time to permit the Pre-Grant Publication Division to remove the application from the publication process. The USPTO has a fillable PDF form for express abandonment here.
Additional Resources and Related Links
1. For more information on the subject of patent publication in general, the USPTO has a page dedicated to the subject here.
2. My earlier post on correcting filing errors and omissions follows this link.
3. The USPTO’s forms page follows this link.
© 2010, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney