Exercise Extra Care With NonPublication Requests

June 4, 2010

in Practice Suggestions,The MPEP

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.

A nonpublication request may be made by filing a discrete document such as Form PTO/SB/35 or by checking the appropriate box shown below in an Application Data Sheet (Form PTO/SB/14).

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.

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© 2010, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney


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