You need to submit USPTO Form SB36, specifically the “Rescission of Previous Nonpublication Request,” if you wish to file a foreign patent application if you’ve submitted a nonpublication request when you filed your patent application. In this article, I’ll show you how.
Here’s a guide to properly completing and submitting Form SB36.
1. Understanding Form SB36 and Its Purpose
Form SB36 is used to rescind a previous nonpublication request. When you file a nonprovisional application, your application by default will be published 18 months after the earliest priority date. The USPTO allows applicants to request that their application remain unpublished so long as they do not intend to file the same invention in foreign countries. However, if circumstances change—such as a decision to pursue international protection—rescinding the nonpublication request is possible but you have to allow your application to be published even if it is not granted as a patent.
A nonpublication request are filed by applicants who wish to keep their invention confidential. They may have included additional details that are not in their actual product. Future features that they want to keep confidential. By opting out of publication, the applicant can prevent competitors from accessing details of the invention before the patent is granted. If the invention does not receive a patent, the details remain undisclosed, protecting the applicant’s proprietary information from entering the public domain. This is only true for the details that are not in their product which they just launched. As such, the nonpublication request is primarily to protect their information included in the application but not incorporated into the product offered to the public.
2. Before You Begin
Consider these important points:
- Timing: Ensure that your rescission request is filed within 45 days after filing the foreign patent application. Otherwise, your US application would be deemed abandoned if you don’t follow this strict timeline.
- Consequences of Rescission: Once you rescind the nonpublication request, your application will become part of the public record and publish as a pre-grant publication even if it doesn’t grant as a patent.
- Once you submit the request to rescind your prior nonpublication request, you can’t change your mind. Your application will be published as a pre-grant publication regardless of whether it grants as a patent or not.
3. Filling Out USPTO Form SB36
Each section of Form SB36 must be completed accurately. Here’s a breakdown of the form:
A. Header Information
- Enter the patent application number associated with the original nonpublication request. This number is crucial for identifying the specific application that will transition from nonpublication to publication.
- Include the filing date of the patent application, ensuring it matches the USPTO’s records. The filing date is essential for verifying the application in question.
- Provide the title of the invention as it appears on the original application. The title helps the USPTO confirm the details of the specific application undergoing status change.
- List the name(s) of the applicant(s). This information confirms the individuals or entities who own the application and are making the request for rescission.
B. Declaration of Rescission
- Read the declaration of rescission that affirms the applicant’s intention to revoke the previous nonpublication request. By completing this section, the applicant formally requests that the application be published.
C. Certification and Signature
- In this section, provide the signature of the applicant or authorized attorney/agent, along with the date and, if required, the attorney or agent’s USPTO registration number.
- Ensure the person signing is authorized to make decisions regarding the application’s status. The inventor should really sign this document if at all possible.
- Double-check the date to avoid confusion with other filings related to the application.
4. Submitting Form SB36
- Review the form to confirm all information is correct.
- File the form electronically with the USPTO.
5. Tips and Common Issues
- Double-Check Application Details: Make sure the application number, filing date, title, and applicant names are correct. Errors in these fields may delay or complicate processing.
- Authorization: Only authorized individuals, such as the applicant or their registered attorney/agent, should sign the form.
- Timing: Submit the rescission request early in the process if you intend to publish the application. Once the patent is issued, publication is no longer possible.
6. After Submission
Once Form SB36 is submitted and processed, the USPTO will update the application’s status to allow for publication. The application will then enter the USPTO’s queue for public release, typically appearing in the USPTO’s published application database. It will be published around 18 months from the earliest priority date.
Conclusion
Filling out USPTO Form SB36 must be done if you previously filed a nonpublication request and now want to seek foreign patent protection.