M.P.E.P. 1100 Statutory Invention Registration (SIR) [Pre-AIA] and the Pre-Grant Publication Process and Document

Question 1

Statutory Invention Registration (SIR)

Answer 1

AIA done away with.

Questioned on Pre-AIA, when you don’t have the budget to file the rest.

Hybrid: Government Agent can file an application
-gets 102(e) from filing after publishing

Does not bestow rights, a shield from interference.

Protects create from lawsuit, and could be sword on prior art.

Question 2

The Pre-Grant Publication “PG PUB” Process and Document

Answer 2

Applies to Applications filed on or after 11/29/00,

Unexamined, gets published.

Applies to:

1. CON/DIV/CIP
2. National Stage/International Applications
3. New applications

**Not Design

Question 3

What applications are not publish under Pre-Grant Publication Process?

Answer 3

1. No longer pending applications
2. Applications under Secrecy Order
3. Provisional Applications
4. Design Applications
   AND
5. Applications including requests not to publish

Question 4

Opting Out (Request to Not Publish)

Answer 4

Only if the invention has not be and will not be subject of an application filed in another county (under WIPO/NAFTA) that requires 18 Month Publication.
- No present intent to file outside US

Must be:
1. made upon filing
2. Signed certification
AND
3. Conspicuous

Question 5

Conspicuous Defined

Answer 5

Standing out as to be clearly visable

Question 6

What if you have changed your mind and want to file the application in a foreign country?

Answer 6

You have 45 days to:

1. Tell where you filed internationally
2. You rescind your request to opt out of publication.

Question 7

Can you change your publication?

Answer 7

Yes by using EFS.

**Needs to be in withint 16 months of filing date.

**You must turn in a redacted version.

Question 8

What gets published?

Answer 8

Everything filed.

Question 9

Publication As Prior Art??

Answer 9

Needs to double check because they have not been examined.

**Be aware when you get rejected by this.

Question 10

Access to Application After Publication

Answer 10

Not direct physical access.

USPTO provides (for $200 for <= 400 pages, $25):
1. Copy of file wrapper
AND
2. Contents of published application
OR
3. Specific papers.