[Notices] [Pages 42684-42686]
From the Federal Register Online via the Government Printing Office [www.gpo.gov
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Statutory Invention Registration
ACTION: Proposed collection; comment request.
To see the complete text of this comment request access:http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2011_register&docid=fr19jy11-61.
SUPPLEMENTARY INFORMATION: I. Abstract
An applicant for an original patent may request, at any time during the pendency of the applicant's pending complete application, that the specification and drawings be published as a statutory invention registration (SIR). A published SIR is not a patent. It has the defensive attributes of a patent, e.g., it is usable as a reference as of its filing date in the same manner as a patent, but does not have the enforceable attributes of a patent. Historically, applicants have requested that the USPTO publish their patent applications as SIRs in certain instances when, for any of a variety of reasons, applicants no longer wanted to go through the effort and expense of obtaining patents on the inventions claimed in the applications. However, given that 37 CFR 1.211 requires the publication of most nonprovisional applications filed on or after November 29, 2000, applicants have increasingly found 1.211 publication of an application to be a desirable alternative to requesting an SIR, particularly since 1.211 publication of the application is achieved without any waiver of patent rights.
35 U.S.C. 157 authorizes the USPTO to publish an SIR containing the specifications and drawings of a regularly filed application for a patent without examination if the applicant: (i) Meets the requirements of 35 U.S.C. 112; (ii) has complied with the requirements for printing; (iii) waives the right to receive a patent on the invention claimed effective upon the date of publication of the SIR; and (iv) pays all application, publication and other processing fees.
The USPTO administers 35 U.S.C. 157 through 37 CFR 1.293-1.297. Any request for an SIR is examined to determine whether the subject matter of the application is appropriate for publication and all other requirements have been met, including the requirements of 35 U.S.C. 112 and 37 CFR 1.293.
The requester may petition the USPTO to review rejection decisions within one month or other such time as is set forth in the decision refusing publication. The requester may also petition the USPTO to withdraw a request to publish an SIR prior to the date of the notice of the intent to publish.
If the request for an SIR is approved, a notice to that effect will be published in the Official Gazette of the USPTO. Each SIR that is published will include a statement relating to the attributes of an SIR.
The public uses form PTO/SB/94, Request for Statutory Invention Registration, to request and authorize publication of a regularly filed patent application as an SIR, to waive the right to receive a United States patent on the same invention claimed in the identified patent application, to agree that the waiver will be effective upon publication of the SIR, and to state that the identified patent application complies with the requirements for printing. No forms are associated with the petition for a review of the refusal to publish an SIR or the petition to withdraw the request for publication of an SIR.