US Laws, Codes, Statutes & Cases

From the U.S. Code Online via GPO Access
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[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
  January 24, 2002 and December 19, 2002]
[CITE: 35USC122]

 
                            TITLE 35--PATENTS
 
        PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
 
                   CHAPTER 11--APPLICATION FOR PATENT
 
Sec. 122. Confidential status of applications; publication of 
        patent applications
        
    (a) Confidentiality.--Except as provided in subsection (b), 
applications for patents shall be kept in confidence by the Patent and 
Trademark Office and no information concerning the same given without 
authority of the applicant or owner unless necessary to carry out the 
provisions of an Act of Congress or in such special circumstances as may 
be determined by the Director.
    (b) Publication.--
        (1) In general.--(A) Subject to paragraph (2), each application 
    for a patent shall be published, in accordance with procedures 
    determined by the Director, promptly after the expiration of a 
    period of 18 months from the earliest filing date for which a 
    benefit is sought under this title. At the request of the applicant, 
    an application may be published earlier than the end of such 18-
    month period.
        (B) No information concerning published patent applications 
    shall be made available to the public except as the Director 
    determines.
        (C) Notwithstanding any other provision of law, a determination 
    by the Director to release or not to release information concerning 
    a published patent application shall be final and nonreviewable.
        (2) Exceptions.--(A) An application shall not be published if 
    that application is--
            (i) no longer pending;
            (ii) subject to a secrecy order under section 181 of this 
        title;
            (iii) a provisional application filed under section 111(b) 
        of this title; or
            (iv) an application for a design patent filed under chapter 
        16 of this title.

        (B)(i) If an applicant makes a request upon filing, certifying 
    that the invention disclosed in the application has not and will not 
    be the subject of an application filed in another country, or under 
    a multilateral international agreement, that requires publication of 
    applications 18 months after filing, the application shall not be 
    published as provided in paragraph (1).
        (ii) An applicant may rescind a request made under clause (i) at 
    any time.
        (iii) An applicant who has made a request under clause (i) but 
    who subsequently files, in a foreign country or under a multilateral 
    international agreement specified in clause (i), an application 
    directed to the invention disclosed in the application filed in the 
    Patent and Trademark Office, shall notify the Director of such 
    filing not later than 45 days after the date of the filing of such 
    foreign or international application. A failure of the applicant to 
    provide such notice within the prescribed period shall result in the 
    application being regarded as abandoned, unless it is shown to the 
    satisfaction of the Director that the delay in submitting the notice 
    was unintentional.
        (iv) If an applicant rescinds a request made under clause (i) or 
    notifies the Director that an application was filed in a foreign 
    country or under a multilateral international agreement specified in 
    clause (i), the application shall be published in accordance with 
    the provisions of paragraph (1) on or as soon as is practical after 
    the date that is specified in clause (i).
        (v) If an applicant has filed applications in one or more 
    foreign countries, directly or through a multilateral international 
    agreement, and such foreign filed applications corresponding to an 
    application filed in the Patent and Trademark Office or the 
    description of the invention in such foreign filed applications is 
    less extensive than the application or description of the invention 
    in the application filed in the Patent and Trademark Office, the 
    applicant may submit a redacted copy of the application filed in the 
    Patent and Trademark Office eliminating any part or description of 
    the invention in such application that is not also contained in any 
    of the corresponding applications filed in a foreign country. The 
    Director may only publish the redacted copy of the application 
    unless the redacted copy of the application is not received within 
    16 months after the earliest effective filing date for which a 
    benefit is sought under this title. The provisions of section 154(d) 
    shall not apply to a claim if the description of the invention 
    published in the redacted application filed under this clause with 
    respect to the claim does not enable a person skilled in the art to 
    make and use the subject matter of the claim.

    (c) Protest and Pre-Issuance Opposition.--The Director shall 
establish appropriate procedures to ensure that no protest or other form 
of pre-issuance opposition to the grant of a patent on an application 
may be initiated after publication of the application without the 
express written consent of the applicant.
    (d) National Security.--No application for patent shall be published 
under subsection (b)(1) if the publication or disclosure of such 
invention would be detrimental to the national security. The Director 
shall establish appropriate procedures to ensure that such applications 
are promptly identified and the secrecy of such inventions is maintained 
in accordance with chapter 17 of this title.

(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 93-596, Sec. 1, Jan. 2, 
1975, 88 Stat. 1949; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, 
Sec. 4502(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-561.)


                      Historical and Revision Notes

    This section enacts the Patent Office rule of secrecy of 
applications.


                               Amendments

    1999--Pub. L. 106-113 amended section catchline and text generally. 
Prior to amendment, text read as follows: ``Applications for patents 
shall be kept in confidence by the Patent and Trademark Office and no 
information concerning the same given without authority of the applicant 
or owner unless necessary to carry out the provisions of any Act of 
Congress or in such special circumstances as may be determined by the 
Commissioner.''
    1975--Pub. L. 93-596 substituted ``Patent and Trademark Office'' for 
``Patent Office''.


                    Effective Date of 1999 Amendment

    Amendment by of Pub. L. 106-113 effective Nov. 29, 2000, and 
applicable only to applications (including international applications 
designating the United States) filed on or after that date, and 
applications published pursuant to subsec. (b) of this section resulting 
from an international application filed before Nov. 29, 2000 not to be 
effective as prior art as of the filing date of the international 
application, but to be effective as prior art in accordance with section 
102(e) of this title in effect on Nov. 28, 2000, see section 1000(a)(9) 
[title IV, Sec. 4508] of Pub. L. 106-113, as amended, set out as a note 
under section 10 of this title.


                    Effective Date of 1975 Amendment

    Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4 of 
Pub. L. 93-596, set out as a note under section 1111 of Title 15, 
Commerce and Trade.


            Study of Applicants Filing Only in United States

    Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec. 4502(b)], 
Nov. 29, 1999, 113 Stat. 1536, 1501A-562, provided that:
    ``(1) In general.--The Comptroller General shall conduct a 3-year 
study of the applicants who file only in the United States on or after 
the effective date of this subtitle [see section 1000(a)(9) [title IV, 
Sec. 4508] of Pub. L. 106-113, set out as an Effective Date of 1999 
Amendment note under section 10 of this title] and shall provide the 
results of such study to the Judiciary Committees of the House of 
Representatives and the Senate.
    ``(2) Contents.--The study conducted under paragraph (1) shall--
        ``(A) consider the number of such applicants in relation to the 
    number of applicants who file in the United States and outside of 
    the United States;
        ``(B) examine how many domestic-only filers request at the time 
    of filing not to be published;
        ``(C) examine how many such filers rescind that request or later 
    choose to file abroad;
        ``(D) examine the status of the entity seeking an application 
    and any correlation that may exist between such status and the 
    publication of patent applications; and
        ``(E) examine the abandonment/issuance ratios and length of 
    application pendency before patent issuance or abandonment for 
    published versus unpublished applications.''

                  Section Referred to in Other Sections

    This section is referred to in sections 2, 5, 102, 135, 154, 374 of 
this title.