From the category archives:

MPEP 1100

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:

  1. 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.
  2. Usually the SIRs get filed by U.S. governmental agencies to act as defenses against other private parties trying to patent the same invention.
  3. An SIR may be filed at time of application, or later on as long as the app is in pendency (37 CFR 1.293).
  4. Requirements for an SIR Request:
    1. A waiver of the applicant’s rights to actually get a patent. (Remember, if in the SIR, the application will NOT become a patent!)
    2. The fee ($$)
    3. 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).
    4. A statement that this app meets the formal requirements for printing.
    5. The app must have all of the 37 CFR 1.51(b) sections: specs, necessary drawings, claims, oaths/declarations.
  5. 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).
  6. 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.
  7. 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).

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