RE: [PIUG List] RE: 35 USC 122(b)(2)(B) - Request for Application NOT to be Published

Thanks Alan. It is complex and I may not have made it clear. X is the
priority for the PCT application. So X predates the PCT application. The
filing date for X is sandwiched between the filing dates for its granted
parent (filed before X) and the subsequent PCT application (filed after
X). X is a non provisional US application.

 

Simon

________________________________

From: Alan [mailto:aengel_at_paterra.com]
Sent: Tuesday, 5 February 2008 12:08 PM
To: Simon Ochsenbein; 'PIUG Discussion List @ Listbox'
Subject: 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Application NOT to be Published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NOT to be Published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Subject: 35 USC 122(b)(2)(B) - Request for Application NOT to be
Published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 - 03:49:37