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901.03 Pending Applications - 900 Prior Art, Classification, Search
901.03 Pending Applications
Except as provided in 37 CFR 1.11(b), 37 CFR 1.14(c) and 37 CFR 1.14(e), pending U.S. applications filed before November 29, 2000 which are not voluntarily published and applications filed on or after November 29, 2000 which have not been published are generally preserved in confidence ( 37 CFR 1.14(a)) and are not available as references. However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity. See MPEP § 804. For applications having a common assignee and different inventive entities claiming a single inventive concept, see MPEP § 804.03. See also MPEP § 2127, paragraph IV.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request voluntary publication shall be published except for the following enumerated exceptions.
First, an application shall not be published if it is:
(A) no longer pending;
(B) subject to a secrecy order under 35 U.S.C. 181 or an application for which publication or disclosure would be detrimental to national security;
(C) a provisional application filed under 35 U.S.C. 111(b);
(D) an application for a design patent filed under 35 U.S.C. 171; or
(E) a reissue application filed under 35 U.S.C. 251.
Second, an application shall not be published if an applicant submits at the time of filing of the application a request for nonpublication, certifying that the invention disclosed in the U.S. application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen month publication. See 37 CFR 1.213(a). An applicant may rescind such a request at any time. See 37 CFR 1.213(b). If the applicant who has submitted a nonpublication request subsequently files an application directed to the invention disclosed in the U.S. application, in which the nonpublication request was submitted, in another country, or under a multilateral international agreement, that requires publication of the application eighteen months after filing, the applicant must notify the Office of such filing within forty-five days after the date of the filing of such foreign or international application. See 37 CFR 1.213(c). In addition, if an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign-filed applications or the description of the invention in such foreign-filed applications is less extensive than the application or description of the invention in the application filed in the USPTO, the applicant may submit a redacted copy of the application filed in the Office eliminating any part or description of the invention in the U.S. application that is not also contained in any of the corresponding applications filed in a foreign country. If the redacted copy of the U.S. application is timely received in the Office, the Office may publish only the redacted copy. See 35 U.S. 122(b)(2)(B)(v) and 37 CFR 1.217.
U.S. patent application publications are prior art under 35 U.S.C. 102(a) and 102(b) as of the publication date. Under amended 35 U.S.C. 102(e)(1), a U.S. patent application publication is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application is considered to be prior art under 35 U.S.C. 102(e) as of the international filing date only if the International Application designated the United States and was published by the International Bureau (IB) in English.
Any new prior art created by the changes to 35 U.S.C. 102(e) may only be applied against applications that are filed on or after November 29, 2000, and against applications filed prior to November 29, 2000 that are pending on November 29, 2000 and are voluntarily published. The new prior art effects created by amended 35 U.S.C. 102(e) will not be applicable to any application filed before November 29, 2000 and not voluntarily published, nor a reexamination of a patent issued on such an application. Additionally, the new prior art effect created by amended 35 U.S.C. 102(e) will not be applicable to any National Stage application, complying with 35 U.S.C. 371(c), whose international filing date is before November 29, 2000 if it is not voluntarily published.
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