Statutory invention registration (SIR) provides inventors with a means for placing their invention in the public domain, allowing members of the public access to it. By filing an SIR, the inventor(s) will not gain a patent on the subject matter. The SIR only serves as a printed notice of the disclosed invention. SIR's are printed in the Official Gazette. Therefore, an SIR will become a prior art reference after its publication date, barring anyone else from ever gaining a patent on that particular invention.

All applications are scheduled for publication 18 months after their filing date. This chapter will cover publication, nonpublication and redacted publications.

It is very unlikely that you will see more than one question dealing with Statutory Invention Registrations on the patent bar exam. The basics outlined in this chapter will provide you with more than enough information to prepare for this topic. The topics that are most likely to be tested are withdrawing and/or converting an SIR, or the petition to review a decision finally refusing to publish an SIR. Publication of applications will probably be asked in a question or two as well.

Statutory Invention Registration

1101 Request for Statutory Invention Registration (SIR)

35 U.S.C. 157 Statutory invention registration.
(a) Notwithstanding any other provision of this title, the Director is authorized to publish a statutory invention registration containing the specification and drawings of a regularly filed application for a patent without examination if the applicant
(1) meets the requirements of section 112 of this title;
(2) has complied with the requirements for printing, as set forth in regulations of the Director;
(3) waives the right to receive a patent on the invention within such period as may be prescribed by the Director; and
(4) pays application, publication, and other processing fees established by the Director. If an interference is declared with respect to such an application, a statutory invention registration may not be published unless the issue of priority of invention is finally determined in favor of the applicant.
(b) The waiver under subsection (a)(3) of this section by an applicant shall take effect upon publication of the statutory invention registration.
(c) A statutory invention registration published pursuant to this section shall have all of the attributes specified for patents in this title except those specified in section 183 and sections 271 through 289 of this title. A statutory invention registration shall not have any of the attributes specified for patents in any other provision of law other than this title. A statutory invention registration published pursuant to this section shall give appropriate notice to the public, pursuant to regulations which the Director shall issue, of the preceding provisions of this subsection. The invention with respect to which a statutory invention certificate is published is not a patented invention for purposes of section 292 of this title.
(d) The Director shall report to the Congress annually on the use of statutory invention registrations. Such report shall include an assessment of the degree to which agencies of the federal government are making use of the statutory invention registration system, the degree to which it aids the management of federally developed technology, and an assessment of the cost savings to the Federal Government of the uses of such procedures.

§ 1.293 Statutory invention registration.
(a) An applicant for an original patent may request, at any time during the pendency of applicant's pending complete application, that the specification and drawings be published as a statutory invention registration. Any such request must be signed by (1) the applicant and any assignee of record or (2) an attorney or agent of record in the application.
(b) Any request for publication of a statutory invention registration must include the following parts:
(1) A waiver of the applicant's right to receive a patent on the invention claimed effective upon the date of publication of the statutory invention registration;
(2) The required fee for filing a request for publication of a statutory invention registration as provided for in § 1.17(n) or (o);
(3) A statement that, in the opinion of the requester, the application to which the request is directed meets the requirements of 35 U.S.C. 112; and
(4) A statement that, in the opinion of the requester, the application to which the request is directed complies with the formal requirements of this part for printing as a patent.
(c) A waiver filed with a request for a statutory invention registration will be effective, upon publication of the statutory invention registration, to waive the inventor's right to receive a patent on the invention claimed in the statutory invention registration, in any application for an original patent which is pending on, or filed after, the date of publication of the statutory invention registration. A waiver filed with a request for a statutory invention registration will not affect the rights of any other inventor even if the subject matter of the statutory invention registration and an application of another inventor are commonly owned. A waiver filed with a request for a statutory invention registration will not affect any rights in a patent to the inventor which issued prior to the date of publication of the statutory invention registration unless a reissue application is filed seeking to enlarge the scope of the claims of the patent. See also § 1.104(c)(5).

a Statutory Invention Registration:
is a cross between a patent and a publication
is considered prior art under 102(e)
does not confer any rights to exclude someone from using the invention (no patent rights), it only bars others from ever gaining a patent on it

the federal government uses SIRs
private companies or individuals rarely file for an SIR

SIRs are not usually recommended because they are expensive
the same task will be accomplished by just publishing the subject matter in a book, Magazine or journal
publication of an application may be a desirable alternative to requesting a SIR since publication of the application is achieved without any waiver of patent rights
a statutory invention registration will be granted and published if:
it meets the requirements of 35 U.S.C. 112
it complies with printing requirements
the inventor agrees to waive the right to receive a patent
the fees are paid
a published SIR will be treated the same as a U.S. patent for defensive purposes
it will preclude anyone from ever gaining a patent on the invention, however, the applicant will not gain any rights
a request to change to an SIR may be filed at the time of filing a nonprovisional application or may be filed later during the pendency of a nonprovisional application

1105 Review of final refusal to publish SIR
If the SIR is rejected, the applicant can petition to have the decision reviewed. Of course, there is a fee to do this (isn't there always?).

§1.295 Review of decision finally refusing to publish a statutory invention registration.
(a)Any requester who is dissatisfied with the final refusal to publish a statutory invention registration for reasons other than compliance with 35 U.S.C. 112 may obtain review of the refusal to publish the statutory invention registration by filing a petition to the Director accompanied by the fee set forth in § 1.17(h)within one month or such other time as is set in the decision refusing publication. Any such petition should comply with the requirements of § 1.181(b). The petition may include a request that the petition fee be refunded if the final refusal to publish a statutory invention registration for reasons other than compliance with 35 U.S.C.112 is determined to result from an error by the Patent and Trademark Office.
(b)Any requester who is dissatisfied with a decision finally rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the decision by filing an appeal to the Board of Patent Appeals and Interferences pursuant to §1.191.If the decision rejecting claims pursuant to 35 U.S.C.112 is reversed, the request for a statutory invention registration will be approved and the registration published if all of the other provisions of § 1.293 and this section are met..

Petitions to have decision reviewed:
an applicant who is dissatisfied with a final refusal to publish an SIR for reasons other than compliance with 35 U.S.C. 112 may obtain a review by filing a petition under 37 C.F.R. 1.295(a)
an applicant who is dissatisfied with a decision finally rejecting the claims under 35 U.S.C. 112 may obtain a review by filing an appeal with the Board under 37 C.F.R.1.295(b) 1109

Withdrawal of SIR request

the withdrawal of an SIR:
must occur before the Notice of Intent to Publish Statutory Invention Registration has been mailed
is normally granted
involves a petition
an SIR may be withdrawn and a nonprovisional application filed if
done so before a Notice of Intent to Publish Statutory Invention Registration has been mailed:
this type of request will usually be granted, the SIR will be withdrawn and the application will be forwarded for further examination
done so after the mailing date of a Notice of Intent to Publish Statutory Invention Registration:
the applicant will have to petition under 37 C.F.R. 1.183
a fee will be required
if the withdrawal is rejected, the applicant can file an appeal with the Board if he or she desires

the original SIR can be abandoned and replaced by a continuing application:
in this case, the applicant will get the earlier filing date of the SIR
the applicant must file an express abandonment of the original application and a timely request or petition to withdraw the request for an SIR prior to the publication of the SIR 1111

SIR publication and effect

§ 1.297 Publication of statutory invention registration.
(a) If the request for a statutory invention registration is approved the statutory invention registration will be published. The statutory invention registration will be mailed to the requester at the correspondence address as provided for in § 1.33(a). A notice of the publication of each statutory invention registration will be published in the Official Gazette.
(b) Each statutory invention registration published will include a statement relating to the attributes of a statutory invention registration. The statement will read as follows:
A statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. No article or advertisement or the like may use the term patent, or any term suggestive of a patent, when referring to a statutory invention registration. For more specific information on the rights associated with a statutory invention registration see 35 U.S.C. 157.

a published SIR will be treated the same as a U.S. patent for all defensive purposes
it may be used as a reference as of its filing date in the same manner as a patent and may provide support for the following rejections:
a constructive reduction to practice under 35 U.S.C. 102(g)
prior art under 35 U.S.C. 102 (all sections)

if the same subject matter is claimed in an application and in a published statutory invention registration naming a common inventor, the claims in the application should be rejected as being precluded by the waiver in the SIR

the holder of an SIR will not be able to file a reissue application to recapture the rights, including the right to exclude others from making, using, selling, offering to sell, or importing the invention, that were waived by the initial publication of the SIR

Publication of Applications

1120 Eighteen month publication of patent applications

35 U.S.C. 122. Confidential status of applications; publication of patent applications. PUBLICATION.
(1) IN GENERAL.
(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures
determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing
date for which a benefit is sought under this title. At the request of the applicant, an application may be
published earlier than the end of such 18month period.
(B) No information concerning published patent applications shall be made available to the public except as
the Director determines.
(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release
information concerning a published patent application shall be final and nonreviewable.
(2) EXCEPTIONS.
(A) An application shall not be published if that application is
(i) no longer pending;
(ii) subject to a secrecy order under section 181 of this title;
(iii) a provisional application filed under section 111(b) of this title; or
(iv) an application for a design patent filed under chapter 16 of this title.

§ 1.211 Publication of applications.
(a) Each U.S. national application for patent filed in the Office under 35 U.S.C. 111(a) and each international application in compliance with 35 U.S.C. 371 will be published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code, unless:
(1) The application is recognized by the Office as no longer pending;
(2) The application is national security classified (see § 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under national security review;
(3) The application has issued as a patent in sufficient time to be removed from the
publication process; or
(4) The application was filed with a nonpublication request in compliance with §
1.213(a).
(b) Provisional applications under 35 U.S.C. 111(b) shall not be published, and design applications under 35 U.S.C. chapter 16 and reissue applications under 35 U.S.C. chapter 25 shall not be published under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be published until it includes the basic filing fee (§ 1.16(a) or 1.16(g)), any English translation required by § 1.52(d), and an executed oath or declaration under § 1.63. The Office may delay publishing any application until it includes a specification having papers in compliance with § 1.52 and an abstract (§ 1.72(b)), drawings in compliance with § 1.84, and a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), and until any petition under § 1.47 is granted.
(d) The Office may refuse to publish an application, or to include a portion of an application in the patent application publication (§ 1.215), if publication of the application or portion thereof would violate Federal or state law, or if the application or portion thereof contains offensive or disparaging material.
(e) The publication fee set forth in § 1.18(d) must be paid in each application published under this section before the patent will be granted. If an application is subject to publication under this section, the sum specified in the notice of allowance under § 1.311 will also include the publication fee which must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application. This threemonth period is not extendable. If the application is not published under this section, the publication fee (if paid) will be refunded

nonprovisional utility and plant applications filed on or after November 29, 2000 are published promptly after the expiration of 18months from the earliest filing date for which benefit is sought
nonprovisional applications entering the national stage from an international application filed on or after November 29, 2000 will also be published
this is regardless of whether the international application was published by the International Bureau under PCT Article 21 in English

the following applications will not be published:
provisionals
designs
reissues

the publication date is 18months from the earliest of the following:
the U.S. filing date
the international filing date
the filing date of an earlier application if the application claims the benefit of the earlier application
example: a CPA for a utility or plant patent filed on or after November 29, 2000 will be published based upon the application papers deposited on the filing date of the first application
note: an RCE is not considered the filing of a new application, so it will not cause an application filed before November 29, 2000 to be published

exceptions to publication include when:
the application is recognized by the Office as not pending
its status has been changed to abandoned by the Office and has been removed from the publication process
the application is under a secrecy order
the application has already issued in sufficient time for it to be removed from the publication process
however, the Office will not stop with the publication process until a patent actually issues
the application was filed with a nonpublication request

converting a nonprovisional to a provisional application will not prevent the original nonprovisional from being published unless the request to convert occurs early enough that the Office recognizes the conversion and can remove the nonprovisional from the publication process

an application must be complete before it will be published, the Office will not publish an application until it includes:
the filing fee
an English translation if in a foreign language
an executed oath or declaration
a specification
an abstract
drawings (if necessary)
a sequence listing

the projected publication date is always listed on the filing receipt for every complete patent application:
technical preparations for publication generally begin 4 months prior to the projected publication date
anything that occurs after the 4 month window begins may not be recognized in enough time to alter the publication process

1121 Content of patent application publication

§ 1.215 Patent application publication.
(a) The publication of an application under 35 U.S.C. 122(b) shall include a patent application publication. The date of publication shall be indicated on the patent application publication. The patent application publication will be based upon the application papers deposited on the filing date of the application, as well as the executed oath or declaration submitted to complete the application, and any application papers or drawings submitted in reply to a preexamination notice requiring a title and abstract in compliance with § 1.72, application papers in compliance with § 1.52, drawings in compliance with § 1.84, or a sequence listing in compliance with §§ 1.821 through 1.825, except as otherwise provided in this section. The patent application publication will not include any amendments, including preliminary amendments, unless applicant supplies a copy of the application containing the amendment pursuant to paragraph (c) of this section.
(b) If applicant wants the patent application publication to include assignee information, the applicant must include the assignee information on the application transmittal sheet or the application data sheet (§ 1.76). Assignee information may not be included on the patent application publication unless this information is provided on the application transmittal sheet or application data sheet included with the application on filing. Providing this information on the application transmittal sheet or the application data sheet does not substitute for compliance with any requirement of part 3 of this chapter to have an assignment recorded by the Office.
(c) At applicant's option, the patent application publication will be based upon the copy of the application (specification, drawings, and oath or declaration) as amended during examination, provided that applicant supplies such a copy in compliance with the Office electronic filing system requirements within one month of the actual filing date of the application or fourteen months of the earliest filing date for which a benefit is sought under title 35, United States Code, whichever is later.
(d) If the copy of the application submitted pursuant to paragraph (c) of this section does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in paragraph (a) of this section. If, however, the Office has not started the publication process, the Office may use an untimely filed copy of the application supplied by the applicant under paragraph (c) of this section in creating the patent application publication.

patent application publication will generally be based upon:
patent application papers and drawings deposited on the filing date of the application
the oath or declaration any subsequently filed application papers or drawings submitted to complete the
application
the correspondence address
the published patent application may also be based upon amendments submitted early enough to
be entered in the application before the technical preparations began:
technical preparations usually begin within 1 month of the mailing date of the filing
receipt of the application or 14 months from the applications earliest filing date,
whichever is later
the replacement section (i.e., specification, drawings, etc) may be filed through the
Electronic Filing System (EFS)
if an applicant would like assignee information published, the info should be provided on an application transmittal letter or an application data sheet (ADS)

1122 Requests for nonpublication

35 U.S.C. 122. Confidential status of applications; publication of patent applications.
(b) PUBLICATION.
(2) EXCEPTIONS.
(B)(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).

37 CFR 1.213. Nonpublication request.
(a) If the invention disclosed in an application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the application will not be published under 35 U.S.C. 122(b) and § 1.211 provided:
(1) A request (nonpublication request) is submitted with the application upon filing;
(2) The request states in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b);
(3) The request contains a certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication at eighteen months after filing; and
(4) The request is signed in compliance with § 1.33(b)
(b) The applicant may rescind a nonpublication request at any time. A request to rescind a nonpublication request under paragraph (a) of this section must:
(1) Identify the application to which it is directed;
(2) State in a conspicuous manner that the request that the application is not to be published under 35 U.S.C. 122(b) is rescinded; and
(3) Be signed in compliance with § 1.33(b).
(c) If an applicant who has submitted a nonpublication request under paragraph (a) of this section subsequently files an application directed to the invention disclosed in the application in which the nonpublication request was submitted in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the applicant must notify the Office of such filing within fortyfive days after the date of the filing of such foreign or international application. The failure to timely notify the Office of the filing of such foreign or international application shall result in abandonment of the application in which the nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).

applicants may request that their application not be published by filing a nonpublication request under 37 C.F.R. 1.213
in order for this to be possible, prior to filing the nonpublication request, the applicant must not have been and will not be the subject of a foreign or international application filed in another country, or under a multilateral agreement that requires 18month publication
a nonpublication request is not proper even if the foreign or international application is abandoned before the foreign or international application is published
the applicant must have an affirmative intent to file a counterpart application
the criteria for a nonpublication request includes:
that the nonpublication request must be submitted with the application upon filing that the nonpublication request must be conspicuous (i.e. highlighted)
a certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement requiring 18month publication
the proper signature

1123 Rescission of a nonpublication request
If an applicant files a nonpublication request and then decides to file a counterpart application, he or she must rescind the nonpublication request before or on the date of the foreign or international counterpart application. If the rescission is properly filed, the application will be treated as if the nonpublication request was never made.

if an applicant filed a nonpublication request and then subsequently files for a counterpart application in a foreign country or under a multilateral agreement that requires 18month publication, without first rescinding the nonpublication request, their application will be abandoned

a rescission of a nonpublication request will never receive the benefit of a certificate of mailing or transmission
the USPTO will use the actual date of receipt at the Office

1124 Notice of foreign filing
A Notice of foreign filing is a last resort for an applicant who initially filed a nonpublication request and later filed a counterpart application without first rescinding the nonpublication request.

if an applicant filed a nonpublication request and then filed a counterpart application in a foreign country, or under a multilateral international agreement that requires publication of applications 18months after filing and he or she did not rescind the nonpublication requirement beforehand, a Notice of foreign filing must be filed no later than 45 days after the filing date of the counterpart foreign application to avoid abandonment
the benefit of a certificate of mailing or transmission will be given to a Notice of foreign filing

if an applicant does not file the Notice of foreign filing within the 45day period, or rescind the nonprovisional request before filing the counterpart application, his or her application will be abandoned
the abandoned application may be revived under 37 C.F.R. 1.137(b) on the basis of unintentional delay

1125 Express abandonment to avoid publication
applicant may file for express abandonment under 37 C.F.R. 1.138(c) in order to abandon the application to avoid publication

the request must be filed in sufficient time for the Office to remove the application from the publication process

1126 Publication fees
the publication fee must be paid before a patent will be granted on the application
this fee is due within 3 months of the Notice of Allowance and fees due unless prepaid or the application will be abandoned

no discount for small entity status will granted

1128 Availability of published applications
members of the public cannot obtain physical access to any pending, published applications

1129 Request for early publication

§ 1.219 Early publication.
Applications that will be published under § 1.211 may be published earlier than as set forth in § 1.211(a) at the request of the applicant. Any request for early publication must be accompanied by the publication fee set forth in § 1.18(d). If the applicant does not submit a copy of the application in compliance with the Office electronic filing system requirements pursuant to § 1.215(c), the Office will publish the application as provided in § 1.215(a). No consideration will be given to requests for publication on a certain date, and such requests will be treated as a request for publication as soon as possible.

earlier publication is possible by submitting a request under 37 C.F.R. 1.219 along with the publication fee

1130 Republication and correction of patent application publication
It is possible for an applicant to correct material errors (those affecting the technical disclosure of the invention) in a patent application publication or to republish the application with an amended specification.

§ 1.221 Voluntary publication or republication of patent application publication.
(a) Any request for publication of an application filed before, but pending on, November 29, 2000, and any request for republication of an application previously published under § 1.211, must include a copy of the application in compliance with the Office electronic filing system requirements and be accompanied by the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). If the request does not comply with the requirements of this paragraph or the copy of the application does not comply with the Office electronic filing system requirements, the Office will not publish the application and will refund the publication fee.
(b) The Office will grant a request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section only when the Office makes a material mistake which is apparent from Office records. Any request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section must be filed within two months from the date of the patent application publication. This period is not extendable.

the request for republication must include:
a copy of the application in compliance with EFS requirements
the publication fee
the processing fee
the application must be pending to be eligible for republication
if the Office made a material mistake (one affecting the technical disclosure of the invention) then the applicant must make a request for a corrected publication under 37 C.F.R. 1.221
these requests must be filed within 2 months from the date of the patent application publication and identify the Office's mistake in the publication
the 2 month time period is nonextendable

if an application includes a more extensive description than any previously filed corresponding foreign application, the applicant may request for redacted publication under 37 C.F.R. 1.217
this would eliminate any part or description of the invention that is not also contained in any of the corresponding applications filed in a foreign country
the Office will publish the redacted copy (the less extensive copy) of the application instead of the full description of the invention disclosed in the U.S.
a request for a redacted publication under 37 C.F.R. 1.217 requires:
a redacted copy of the application in compliance with the Office EFS requirements within 16 months after the earliest filing date for which a benefit is sought
a certified copy of each foreign filing application that corresponds to the U.S. application for which a redacted copy is submitted
a translation of each such foreign filed application that is in a language other than English, and a statement that the translation is accurate
a marked up copy of the application showing the redactions in brackets
a certification that the redacted copy of the application eliminates only the part or description of the invention that is not combined in any counterpart application

1132 Requests for redacted publication

§ 1.217 Publication of a redacted copy of an application.
(a) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreignfiled applications or the description of the invention in such foreignfiled applications is less extensive than the application or description of the invention in the application filed in the Office, the applicant may submit a redacted copy of the application filed in the Office for publication, eliminating any part or description of the invention that is not also contained in any of the corresponding applications filed in a foreign country. The Office will publish the application as provided in § 1.215(a) unless the applicant files a redacted copy of the application in compliance with this section within sixteen months after the earliest filing date for which a benefit is sought under title 35, United States Code.
(b) The redacted copy of the application must be submitted in compliance with the Office electronic filing system requirements. The title of the invention in the redacted copy of the application must correspond to the title of the application at the time the redacted copy of the application is submitted to the Office. If the redacted copy of the application does not comply with the Office electronic filing system requirements, the Office will publish the application as provided in § 1.215(a).
(c) The applicant must also concurrently submit in paper (§ 1.52(a)) to be filed in the application:
(1) A certified copy of each foreignfiled application that corresponds to the application for which a redacted copy is submitted;
(2) A translation of each such foreignfiled application that is in a language other than English, and a statement that the translation is accurate;
(3) A markedup copy of the application showing the redactions in brackets; and
(4) A certification that the redacted copy of the application eliminates only the part or description of the invention that is not contained in any application filed in a foreign country, directly or through a multilateral international agreement, that corresponds to the application filed in the Office.
(d) The Office will provide a copy of the complete file wrapper and contents of an application for which a redacted copy was submitted under this section to any person upon written request pursuant to § 1.14(c)(2), unless applicant complies with the requirements of paragraphs (d)(1), (d)(2), and (d)(3) of this section.
(1) Applicant must accompany the submission required by paragraph (c) of this section
with the following:
(i) A copy of any Office correspondence previously received by applicant including any desired redactions, and a second copy of all Office correspondence previously received by applicant showing the redacted material in brackets; and
(ii) A copy of each submission previously filed by the applicant including any desired redactions, and a second copy of each submission previously filed by the applicant showing the redacted material in brackets.
(2) In addition to providing the submission required by paragraphs (c) and (d)(1) of this section, applicant must:
(i) Within one month of the date of mailing of any correspondence from the Office, file a copy of such Office correspondence including any desired redactions, and a second copy of such Office correspondence showing the redacted material in brackets; and
(ii) With each submission by the applicant, include a copy of such submission including any desired redactions, and a second copy of such submission showing the redacted material in brackets.
(3) Each submission under paragraph (d)(1) or (d)(2) of this paragraph must also be accompanied by the processing fee set forth in § 1.17(i) and a certification that the redactions are limited to the elimination of material that is relevant only to the part or description of the invention that was not contained in the redacted copy of the application submitted for publication.
(e) The provisions of § 1.8 do not apply to the time periods set forth in this section.

1133 Voluntary publication
utility and plant applications filed before November 29, 2000 will not be published under 35 U.S.C. 122(b)
however, if an applicant wishes the Office to publish such an application, the applicant may file a request for voluntary publication under 37 C.F.R. 1.221

1134 Third party inquiries and correspondence in a published application

§ 1.99 Third party submission in published application
(a) A submission by a member of the public of patents or publications relevant to a pending published application may be entered in the application file if the submission complies with the requirements of this section and the application is still pending when the submission and application file are brought before the examiner.
(b) A submission under this section must identify the application to which it is directed by application number and include:
(1) The fee set forth in § 1.17(p);
(2) A list of the patents or publications submitted for consideration by the Office, including the date of publication of each patent or publication;
(3) A copy of each listed patent or publication in written form or at least the pertinent portions; and
(4) An English language translation of all the necessary and pertinent parts of any nonEnglish language patent or publication in written form relied upon.
(c) The submission under this section must be served upon the applicant in accordance with § 1.248.
(d) A submission under this section shall not include any explanation of the patents or publications, or any other information. The Office will not enter such explanation or information if included in a submission under this section. A submission under this section is also limited to ten total patents or publications.
(e) A submission under this section must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier. Any submission under this section not filed within this period is permitted only when the patents or publications could not have been submitted to the Office earlier, and must also be accompanied by the processing fee set forth in § 1.17(i). A submission by a member of the public to a pending published application that does not comply with the requirements of this section will not be entered.
(f) A member of the public may include a selfaddressed postcard with a submission to receive an acknowledgment by the Office that the submission has been received. A member of the public filing a submission under this section will not receive any communications from the Office relating to the submission other than the return of a selfaddressed postcard. In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a submission under this section.

no protests or public use proceedings may be initiated after the publication of an application without the express written consent of the applicant
however, third parties may submit patents or publications under 37 C.F.R. 1.99 for consideration in a pending published application, with no further comment or explanation
these submissions are limited to a 2 month period after the publication of the application, but before the Notice of Allowance is sent out (whichever is earlier)
republication does not restart this 2 month period

submissions under 37 C.F.R. 1.99 must:
be labeled as such and not as a protest, an IDS or a preissuance opposition
be served upon the application
identify the application by application number
include the fee
include a listing of the patents or publications and include a copy of each
include an English translation

a submission under 37 C.F.R. 1.99 must include:
more than 10 total references
explanations of the patents or publications
documents other than patents or publications
markings or highlights on the patents or publications

the involvement of the third party under 37 C.F.R. 1.99 ends with the filing of the submission