RE: [PIUG List] RE: 35 USC 122(b)(2)(B) - Request for Application NOT to be Published

X is a PCT application so the national phase publication does not need to
follow the 18 month rule. For example, my US application 10/960725 was a
PCT application. It was filed 8 October 2004 and republished by the USPTO
26 October 2006, more that 2 years later. (The WIPO publication came out in
April 2006.) This was still before it was submitted into the national
phase. Your application X does not need to be submitted into the national
phase until 30 months after the filing date and it may not show up in PAIR
until it enters the national phase.

 

The USPTO at least republishes US-originated PCT applications before they
enter the US national phase. (I don't know if the USPTO republishes PCT
documents that do not designate the U.S.) The JPO does not republish
JP-originated PCT applications until long after they enter the JP national
phase. This republication is usually 2 years after the WIPO publication
date.

 

Alan Engel

Paterra, Inc.

5-9-4, Tokodai, Tsukuba

Ibaraki 300-2635 Japan

Email: aengel_at_paterra.com

 

 

  _____

From: Simon Ochsenbein [mailto:sochsenbein_at_metalstorm.com]
Sent: Tuesday, February 05, 2008 10:09 AM
To: PIUG Discussion List @ Listbox
Subject: [PIUG List] RE: 35 USC 122(b)(2)(B) - Request for Application NOT
to be Published

 

I haven't received any responses regarding my previous posting attached
below. The application is still not available on PAIR. Anyone know the
answer to any of my questions? If there is anyone from the USPTO on this
list I can give them the serial number?

 

Regards,

 

Simon

  _____

From: Simon Ochsenbein
Sent: Thursday, 31 January 2008 11:01 AM
To: piug_discussion_list_at_v2.listbox.com
Subject: 35 USC 122(b)(2)(B) - Request for Application NOT to be Published

 

I want to track the progress of a US application (X) that was filed far more
than 18 months ago. It has not been published by the USPTO and it is not
available in Public PAIR. X claims benefit from a published US patent (Y). X
is also the priority document for a published PCT application. I downloaded
X from WIPO's website and this 'priority document' indicates that X was a
Divisional of Y. The Public PAIR entry for Y indicates that X is live.

 

Why isn't X published and available on Public PAIR? Is there someone I
contact at the USPTO? I didn't have any luck enquiring through the general
phone number.

 

The Divisional status of X rules out the need to maintain a Secrecy Order on
X. Correct?

 

The only other reason I can think of, apart from an oversight, for
non-publication of X is that it was requested by the applicant.

 

Under 35USC122(b)(2)(B): if the applicant fails to notify the director that
an application for the invention has been filed in a foreign country within
45 days the US application is regarded as abandoned. How does the USPTO
know if the applicant failed to notify it within the prescribed period? Does
the USPTO conduct patent family searches for US applications which are
subject to a request under 35USC122(b)(2)(B)? More importantly, is there a
mechanism for third parties to notify the USPTO of foreign equivalents?

 

If an application which was subject to a request under 35USC122(b)(2)(B) is
'regarded as abandoned', will it subsequently be published and available on
Public PAIR? After all, the specification was put in the public domain by
WIPO.

 

 

Simon Ochsenbein

 

  _____

  _____

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Received on Tue Feb 05 2008 - 03:21:31