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
www.mekiplaw.com