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901.03 Pending Applications [R-3] - 900 Prior Art, Classification, and Search
901.03 Pending Applications [R-3]
Except as provided in 37 CFR 1.11(b), 37 CFR 1.14*>(a)(1)(v)< and 37 CFR 1.14*>(a)(1)(vi)<, pending U.S. applications ** which have not been published are generally preserved in confidence ( 37 CFR 1.14(a)) and are not available as references. However, claims in one nonprovisional application may be rejected on the claimed subject matter of a copending nonprovisional application of the same inventive entity. See MPEP § 804. For applications having a common assignee and different inventive entities claiming a single inventive concept, see MPEP § 804.03. See also MPEP § 2127, paragraph IV.
The American Inventors Protection Act of 1999 (AIPA) was enacted into law on November 29, 1999. The AIPA amended 35 U.S.C. 122 to provide that, with certain exceptions, applications for patent filed on or after November 29, 2000 shall be published promptly after the expiration of a period of eighteen (18) months from the earliest filing date for which a benefit is sought under title 35, United States Code, and that an application may be published earlier at the request of the applicant. See 35 U.S.C. 122(b) and 37 CFR 1.215 and 1.219. In addition, applications filed prior to November 29, 2000, but pending on November 29, 2000, may be published if a request for voluntary publication is filed. See 37 CFR 1.221. Patent applications filed on or after November 29, 2000, and those including a request >for< voluntary publication shall be published except for the following enumerated exceptions.
First, an application shall not be published if it is:
(A) no longer pending;
(B) subject to a secrecy order under 35 U.S.C. 181 **>, that is,< publication or disclosure >of the application< would be detrimental to national security;
(C) a provisional application filed under 35 U.S.C. 111(b);
(D) an application for a design patent filed under 35 U.S.C. 171; or
(E) a reissue application filed under 35 U.S.C. 251.
Second, an application shall not be published if an applicant submits at the time of filing of the application a request for nonpublication**>. See MPEP § 1122.<
U.S. patent application publications are prior art under 35 U.S.C. 102(a) and 102(b) as of the publication date. Under amended 35 U.S.C. 102(e)(1), a U.S. patent application publication >under 35 U.S.C. 122(b)< is considered to be prior art as of the earliest effective U.S. filing date of the published application. Additionally, a U.S. patent application publication of a National Stage application **>and a WIPO publication of an international application under PCT Article 21(2) are considered to be prior art under 35 U.S.C. 102(e) as of the international filing date, or an earlier effective U.S. filing date, only if the international application was filed on or after November 29, 2000, designated the United States, and was published under PCT Article 21(2) in English.<
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