MPEP Q & A 167: When Must Applicants Timely File a Notice of Foreign Filing to Avoid Abandonment of a U.S. Application?

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Question:

Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application.

Answer:

Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if:

  • applicant filed a nonpublication request in the U.S. application filed under 35 U.S.C. 111(a);
  • applicant subsequently filed a foreign or international application directed to the invention disclosed in the U.S. application in a foreign country, or under a multilateral international agreement, that requires publication of applications 18 months after filing (foreign filing or counterpart application); and
  • applicant did not rescind the nonpublication request before filing the foreign or international application.

Chapter Details:

The answer to this question can be found in chapter 1100 of the MPEP. This chapter covers statutory invention registration (SIR); pre-grant publication (PGPub) and preissuance submissions.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1124 of the MPEP.  The following is a brief summary of section 1124.

1124 Notice of Foreign Filing

This section covers the filing of a notice of foreign filing. The notice of foreign filing must be filed not later than 45 days after the filing date of the counterpart application or the application will become abandoned.