MPEP 1100 - Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and ...

Transcript

Every inventor knows that feeling, right? You've got this amazing idea. You need total secrecy to develop it. But then to get that patent, you have to lay it all out for the public. It's a real balancing act. >> It really is.

And patent law has to manage that tension the inventors need for quiet versus the public's right to know what's coming down the pike technology-wise. >> Exactly. And today we're diving deep into the rules that govern that specific switchover. We're focusing on MP Chapter 1100. This is basically the rule book for when patent applications stop being secret files and become public documents.

Documents everyone can see and well react to. >> Okay. Yeah. Let's unpack this. We're really looking at how the patent office, the USPTO, make sure new tech doesn't just stay hidden forever.

We'll look at two main ways applications go public. There's the older system now gone called statutory invention registration sir. Going to have a self-sacrifice model and then the big one today pre-grant publication PG pub which is usually mandatory. Plus, we'll touch on how you, the public, can actually weigh in on these published applications. >> Okay, let's start with that historical detour, then, the SR system.

This was pre203, before the American Invents Act changed things up. It sounds completely backwards at first glance. Why would an inventor choose to publish their invention and give up patent rights? Seriously, why give away the monopoly? >> Um, it was purely a defensive strategy. You know how people say a patent is like a sword, >> right? >> Well, the SR was meant to be a shield, a permanent one. The invader gave up all exclusive rights forever.

The whole point was just to establish definitive prior art. >> Ah, okay. So instead of getting the patent themselves, they were making absolutely sure nobody else could ever patent that specific thing later on, locking it down for the public domain. >> Precisely a guaranteed defensive play. If someone else tried to patent that same, say, solar cell design later, the SIR publication was proof it was already known.

Just a few key details. System's gone now. But when it was active, that waiver of rights was ironclad. Couldn't be undone, not even by reissue. You could spot them by their H number.

And yes, they functioned as solid prior art, but honestly, it wasn't used that often. Most inventors want the sword, not just the shield. >> Makes sense. Okay, that brings us to the modern world and pregrant publication or PG pub. Now, transparency is the default setting, right? Utility applications, plan applications, pretty much the standard stuff.

They get published automatically 18 months after the earliest filing date. Why the big shift to making this mandatory? >> It's all about that trade-off really. Giving the public a heads up sooner. 18 months gives the inventors some breathing room, you know, for business strategy, foreign filings, maybe tweaking claims, but it stops inventions being stuck in limbo, secret for years, while the US PTO examines them. The main policy goal is transparency.

Plain and simple. Get the info out there. Stimulate innovation. Establish prior art earlier. I understand the transparency part, but why 18 months? Is that just arbitrary or tied to treaties? And doesn't this forced publication kind of kill trade secret protection before the inventor even knows if they'll get a patent? >> You nailed the key strategic point there.

Yes, you absolutely lose that trade secret status at 18 months. But you gain something potentially huge in return. >> Provisional rights. Once it's published, if the patent eventually grants, you can potentially seek damages for infringement that happen between publication and grant. You couldn't do that if it stayed secret.

>> Ah, I see. >> The system essentially says, "Okay, we're taking away your secrecy earlier, but here's a potential financial tool you didn't have before." >> That's a critical point. Swapping short-term secrecy for possible long-term recovery. Okay, logistics time. Since it's automatic, how far ahead does the USPTO start prepping for this publication? They don't just flip a switch at 18 months, do they? >> No, definitely not.

They need lead time. Generally, the technical prep for publication kicks off about four months before that projected 18-month date. And that four-month window, it's a hard deadline for applicants. If you want to get amendments in like a cleaner specification or updated claims reflected in the published version, they have to be submitted and crucially entered by the office before that prep work starts. >> Okay, so PG Pub is a standard, but surely there are ways out.

When can an inventor keep their application under wraps? >> Right. There are exceptions. Three main ways an application might not get published. First, it's just not pending anymore. Maybe it granted or the applicant formally abandoned it.

Second, national security. It's subject to a secrecy order. That's handled under MP920, a whole different chapter. And third, this is a strategic one. The inventor properly files a non-publication request when they first submit the application.

>> That non-publication request sounds like the perfect solution for someone only interested in the US market. File domestically. Check the box. Keep it secret. Simple, right? >> Yes.

If you certify, you won't be filing corresponding applications abroad, especially in countries or under treaties that mandate their own 18-month publication. But, and this is a big butt, it sets up a potentially devastating trap. >> A trap. Okay, tell me more. This sounds important.

>> It is. Let's say you file in the US, request non-publication, then later you decide to file a PCT application or directly in a country that requires publication. The moment you file that foreign counterpart, you are legally obligated to notify the USPTO and formally resend your non-publication request. >> Okay, seems reasonable. You change plans, you update the USPTO.

What's the trap? >> The deadline. You have only 45 days from filing that foreign application to notify the USPTO. Missed that deadline. The penalty is severe. Your US application is considered abandoned by statute.

>> Wow. 45 days. That's incredibly tight. A procedural slip up leads to automatic abandonment even if the invention itself is brilliant. >> Absolutely.

The system prioritizes knowing about that foreign filing immediately so the US PTO can get the US application queued up for publication. It's about maintaining that transparency mandate. Patent lawyers live in fear of missing that 45day window. >> Recovering from it requires petitioning the director showing the delay was unintentional, which isn't easy. Okay, that's a major pitfall.

And you mentioned abandoning an application earlier. Is there a risk there too related to publication, like trying to abandon it just to avoid the 18-month publication? >> Yes. Another timing issue. Let's say you requested non-publication, stayed domestic only, but then right before the 18-month mark, you decide, scrap this. I want to keep the tech as a trade secret.

You file an express abandonment. What you need to file that abandonment usually with a petition and fee early enough for the office to actually process it and pull the application from the publication queue before those technical preparation start for a win. Remember that four-month window. >> Ah, so if you wait too long >> Exactly. If you file the abandonment too close to the wire after technical prep is started, the MPDP warns that the petition to prevent publication likely won't be granted.

Your application could still get published even though you tried to abandon it. Secrecy is fragile once you enter the patent system. >> Okay, so let's say the application does get published. What exactly is in that public document? What do people see? >> It's pretty comprehensive. You get the front page data inventor title, abstract, dates, all that.

You get the full specification, the detailed description of the invention and of course any drawings. And really important for biotech, if there's biological material involved, the published application must include any required sequence listing. That means potentially vast amounts of genetic sequence data become public too. >> We keep coming back to that 4month technical preparation deadline. Why is that timing so critical for the applicant beyond just getting amendments in? >> It's really about the accuracy of what the public sees.

That's your last practical chance to make sure the published version reflects the current state of your application or at least the state you want the public to see initially. miss that window and the publication might show an older, maybe less refined or even slightly incorrect version of your claims or description. >> And what if the mistake isn't the applicant's fault? Say the USPTO messes up the publication somehow. Can you get it fixed? >> You can request a corrected publication, yes, but only if the office made a material mistake, something significant and obvious from their own records. However, they draw a line.

The MP is clear. The office will not issue a corrected publication if the error happened because the applicant submitted messy or illeible text in the first place. Clarity starts at the filer. >> Okay. So publication happens, the invention is out there.

This then opens the door for others to chime in, right? How can the public, maybe competitors participate in the examination? >> Absolutely. Yeah. That's where third party pre-show submissions come in. It's governed by rule 37 CFR section 1.290. This allows anyone except the applicant themsself to submit patents or printed publications that they think are relevant prior art against the pending published application.

Kind of like crowdsourcing part of the prior art search. >> That sounds useful, but I bet there are strict rules to stop people from just flooding the examiner with irrelevant stuff late in the game, right? >> Oh, definitely. The timing is super strict. You have to file the submission before the later two dates happens. one, 6 months after the application was published, or two, the date the examiner issues the very first rejection of any claim.

Whichever date comes later, that's your deadline. And crucially, you absolutely cannot file a submission once a notice of allowance has been mailed, even if it gets withdrawn later. The window closes firmly that >> 6 months or first rejection, whichever is later. >> Got it. And what do they actually have to submit? Can they just send a link or a huge stack of papers? No, it has to be structured.

You need a formal list of the documents you're submitting. The PTO has a form for this. PTO's B429. You need clean, legible copies of any non US patents or publications. And here's the key part.

For every single item you submit, you must provide a concise description of its asserted relevance. >> Okay, concise description of relevance. What does that mean in practice? Is that where the third party gets to argue why the invention isn't patentable? >> Ah, good question. No, that's exactly what it isn't. The rule explicitly forbids legal arguments or conclusions about patentability in this description.

It has to stick to the facts. So, a proper description would say something like, "Publication X on page 5, paragraph 2 appears to describe element Y found in claim 3." You point the examiner to the specific part of the document and suggest what it shows factually, but you don't get to say, "Therefore, claim three is anticipated." That final judgment is solely the examiner's job. >> Got it. So, it helps the examiner find relevant passages, but doesn't let the third party hijack the legal analysis. >> Exactly.

It guides, it doesn't argue. >> All right. So, wrapping this up, what's the big picture here for inventors and for the public? Chapter 1100 really maps out how patent filings go from being private secrets to very public regulated events. It seems designed to keep the public informed about new tech while also building that solid foundation of prior art everyone relies on. >> That's a great summary.

And if you trace the evolution we talked about from the old SIR, which was voluntary disclosure as a shield, to today's mandatory PG pub, >> yeah, >> you see the system's emphasis shifting. It highlights that patent law isn't just about granting monopolies. A huge part of its value is creating legal certainty around prior art for the whole innovation landscape. And that certainty depends heavily on this structured, sometimes mandatory publication process. >> But that certainty can come at a steep price for the individual inventor, can it? Thinking back to that 45day foreign filing notification rule, it's kind of startling how a purely procedural error, just missing a deadline to tell the USPTO you filed overseas, can lead to the complete intentional death of your US application, even if the invention itself is solid.

>> It really underscores how much the system values procedural integrity and transparency, sometimes even prioritizing it over the potential merit of the invention itself in that specific scenario. It's a tough rule, but it serves that larger goal of timely public disclosure. >> A fascinating and sometimes harsh aspect of the patent process. That seems like a good place to leave it for this deep dive into MPEP Chapter 1100. >> Agreed.

And before we sign off, we really want to give a special thank you to Mike Shepard. He's the creative director who put this whole audio series together. >> Yes, thank you, Mike. And finally, just the standard disclaimer. This summary of the MPEP was put together with the help of AI tools like chatgpt and notebook LM.

It might have errors or leave things out. It's meant for general educational andformational purposes only. This isn't legal advice and it's definitely not a replacement for formal training. For the official word, always check the MP itself. Talk to a qualified instructor or consult a registered patent practitioner.

Thanks for joining us. >> See you next time.