This section of the MPEP is seldom tested on the exam. The following is general information regarding SIRs.
At any time when an application for a nonprovisional patent is pending (and “complete” per MPEP 1100), an applicant may request that the specification and drawings be published as a statutory invention registration (SIR). A SIR is not a patent and does not have the enforceable attributes as such, but it does have the defensive attributes of a patent.
When an SIR is approved, a notice of publication will appear in the Official Gazette. A published SIR will be treated the same as a US patent for all defensive purposes, usable as a reference as of its filing date in the same manner as a patent. (A SIR represents a constructive reduction to practice.)
Patent rights to the SIR subject matter are waived upon publication of the SIR. Related applications, such as a divisional or other continuing application, may also lose patent protection.
1100: The Statutory Invention Registration (SIR) System:
- When filing an NPA, the applicant may request that the spec & drawings of the app be published by the USPTO. This publication is called the SIR, and the spec & drawings become publicly available prior art as of the publication date in the SIR.
- Usually the SIRs get filed by U.S. governmental agencies to act as defenses against other private parties trying to patent the same invention.
- An SIR may be filed at time of application, or later on as long as the app is in pendency (37 CFR 1.293).
- Requirements for an SIR Request:
- A waiver of the applicant’s rights to actually get a patent. (Remember, if in the SIR, the application will NOT become a patent!)
- The fee ($$)
- A statement that this app meets the standard 35 U.S.C. 112 requirements (proper description/enablement/best mode with claims that meet the definiteness requirements).
- A statement that this app meets the formal requirements for printing.
- The app must have all of the 37 CFR 1.51(b) sections: specs, necessary drawings, claims, oaths/declarations.
- The SIR is examined, but in a limited capacity, just to see if it meets the 37 CFR 1.293 and 35 U.S.C. 112 requirements. However, there is no prior art search for 102/103 rejections (since this will not issue as a patent, it is not important if other prior art already exists).
- The USPTO will either publish if the app meets the 112 & 1.1293 requirements, or will refuse to publish at which time the applicant has the standard 3 month SSP (with 37 CFR 1.136(a) extension) to correct the app to get it published.
- If the app is not corrected, the USPTO will issue a final refusal to publish. If the reason for refusal was not due to a 35 U.S.C. 112 rejection, the applicant may petition under 37 CFR 1.181(b) (including facts, briefs, action request, and fee).
If the app was rejected due to a 35 U.S.C. 112 deficiency, then the applicant may actually appeal the holding under 37 CFR 1.295(b).