10/13/08JULIA KRIPKE - PUBLIC NATURE1 Public Nature of Patent Documents 35 U.S.C. § 122 Patent applications “shall be kept in confidence.” But patent applications are published 18 months after the filing date, whether or not they may later issue. A published application is “open to inspection by the public.” (37 C.F.R. 1.11; MPEP 103)37 C.F.R. 1.11MPEP 103 –After publication, the patent’s file history is available on Public PAIR. (Some documents may be listed as NPL and will not be viewable until the patent issues.) Public PAIR

10/13/08JULIA KRIPKE - PUBLIC NATURE2 Exceptions to Publication: 35 U.S.C. § 122(b)35 U.S.C. § 122(b) Applications are NOT published at 18 months if they are: –No longer pending (i.e., issued or abandoned) –Subject to a secrecy order under 35 U.S.C. § U.S.C. § 181 –Provisional under 35 U.S.C. § 111(b)35 U.S.C. § 111(b) –For a design patent filed under 35 U.S.C. § U.S.C. § 171 –Not the subject of an application filed in a foreign country that requires publication of applications 18 months after filing (35 U.S.C. § 122(b)(2)(B))35 U.S.C. § 122(b)(2)(B)) Under this final exception, the applicant must make a non-publication request upon filing its application with the PTO.

10/13/08JULIA KRIPKE - PUBLIC NATURE3 Why publish? In the 1980s and 1990s, GATT (now WTO) and US groups, too, wanted HARMONY among world patent practices The US used to keep patent applications secret until the patent issued. Most other countries, however, published applications after 18 months. The publication rules were enacted as part of the American Inventors Protection Act of 1999 (AIPA), P.L , Title IV, §§ 4001 et seq.P.L –The AIPA was enacted on November 29, –The publication rules are in Subtitle E, the D omestic Publication of Foreign Filed Patent Applications Act of 1999.

10/13/08JULIA KRIPKE - PUBLIC NATURE4 When did the PTO start publishing? Under section 4508 of the AIPA, the new rules apply to applications filed one year after the enactment of the legislation (i.e., November 29, 2000). But the PTO published the first applications on March 15, 2001, which is only 4--not 18--months after November 29, 2000.March 15, 2001 Explanation? Most likely, these “early” publications involved continuation, divisional, and continuation-in-part applications of applications filed prior to November 29, 2000, as well as voluntary publications. (PTO FAQ)PTO FAQ