35 U.S.C. § 122 — Confidential status of applications; publi-

Page 56 TITLE 35—PATENTS § 121 Amendment by section 202(b)(3) of Pub. L. 112–211 ef- fective on the date that is 1 year after Dec. 18, 2012, ap- plicable to patents issued before, on, or after that effec- tive date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effec- tive date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title. EFFECTIVE DATE OF 2011 AMENDMENT Amendment by section 3(f) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under sec- tion 100 of this title. Amendment by section 15(b) of Pub. L. 112–29 effec- tive on Sept. 16, 2011, and applicable to proceedings commenced on or after that date, see section 15(c) of Pub. L. 112–29, set out as a note under section 119 of this title. Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective Nov. 29, 2000, and applicable only to applications (including inter- national applications designating the United States) filed on or after that date, see section 1000(a)(9) [title IV, § 4508] of Pub. L. 106–113, as amended, set out as a note under section 10 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 applicable to all United States patents granted before, on, or after Nov. 8, 1984, and to all applications for United States patents pend- ing on or filed after that date, except as otherwise pro- vided, see section 106 of Pub. L. 98–622, set out as a note under section 103 of this title. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 94–131 effective Jan. 24, 1978, and applicable on and after that date to patent applica- tions filed in the United States and to international ap- plications, where applicable, see section 11 of Pub. L. 94–131, set out as an Effective Date note under section 351 of this title. § 121. Divisional applications If two or more independent and distinct inven- tions are claimed in one application, the Direc- tor may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a re- sult of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional appli- cation or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be re- stricted to one invention. (July 19, 1952, ch. 950, 66 Stat. 800; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, §§ 4(a)(2), 20(j), Sept. 16, 2011, 125 Stat. 295, 335.) HISTORICAL AND REVISION NOTES This section enacts as law existing practice with re- spect to division, at the same time introducing a num- ber of changes. Division is made discretionary with the Commissioner. The requirements of section 120 are made applicable and neither of the resulting patents can be held invalid over the other merely because of their being divided in several patents. In some cases a divisional application may be filed by the assignee. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘120’’. Pub. L. 112–29, § 4(a)(2), struck out ‘‘If a divisional ap- plication is directed solely to subject matter described and claimed in the original application as filed, the Di- rector may dispense with signing and execution by the inventor.’’ before ‘‘The validity of a patent’’. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ wherever appearing. 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by section 4(a)(2) of Pub. L. 112–29 effec- tive upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent applica- tion that is filed on or after that effective date, see sec- tion 4(e) of Pub. L. 112–29, set out as a note under sec- tion 111 of this title. Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade. § 122. Confidential status of applications; publi- cation of patent applications (a) CONFIDENTIALITY.—Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provi- sions of an Act of Congress or in such special circumstances as may be determined by the Di- rector. (b) PUBLICATION.— (1) IN GENERAL.—(A) Subject to paragraph (2), each application for a patent shall be pub- Page 57 TITLE 35—PATENTS § 122 lished, in accordance with procedures deter- mined by the Director, promptly after the ex- piration of a period of 18 months from the ear- liest filing date for which a benefit is sought under this title. At the request of the appli- cant, an application may be published earlier than the end of such 18-month 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 re- lease 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 sec- tion 181; (iii) a provisional application filed under section 111(b); or (iv) an application for a design patent filed under chapter 16. (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 coun- try, or under a multilateral international agreement, that requires publication of appli- cations 18 months after filing, the application shall not be published as provided in para- graph (1). (ii) An applicant may rescind a request made under clause (i) at any time. (iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention dis- closed in the application filed in the Patent and Trademark Office, shall notify the Direc- tor of such filing not later than 45 days after the date of the filing of such foreign or inter- national application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being re- garded as abandoned. (iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agree- ment specified in clause (i), the application shall be published in accordance with the pro- visions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i). (v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agree- ment, and such foreign filed applications cor- responding to an application filed in the Pat- ent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or de- scription of the invention in the application filed in the Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding ap- plications filed in a foreign country. The Di- rector may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention pub- lished in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim. (c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate proce- dures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publica- tion of the application without the express writ- ten consent of the applicant. (d) NATIONAL SECURITY.—No application for patent shall be published under subsection (b)(1) if the publication or disclosure of such invention would be detrimental to the national security. The Director shall establish appropriate proce- dures to ensure that such applications are promptly identified and the secrecy of such in- ventions is maintained in accordance with chap- ter 17. (e) PREISSUANCE SUBMISSIONS BY THIRD PAR- TIES.— (1) IN GENERAL.—Any third party may sub- mit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the ex- amination of the application, if such submis- sion is made in writing before the earlier of— (A) the date a notice of allowance under section 151 is given or mailed in the applica- tion for patent; or (B) the later of— (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent. (2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall— (A) set forth a concise description of the asserted relevance of each submitted docu- ment; (B) be accompanied by such fee as the Di- rector may prescribe; and (C) include a statement by the person making such submission affirming that the submission was made in compliance with this section. (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4502(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–561; Pub. L. 112–29, §§ 8(a), 20(j), Sept. 16, 2011, 125 Stat. 315, 335; Pub. L. 112–211, title II, § 202(b)(4), Dec. 18, 2012, 126 Stat. 1536.) HISTORICAL AND REVISION NOTES This section enacts the Patent Office rule of secrecy of applications. Page 58 TITLE 35—PATENTS § 123 Editorial Notes AMENDMENTS 2012—Subsec. (b)(2)(B)(iii). Pub. L. 112–211 struck out ‘‘, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was uninten- tional’’ after ‘‘regarded as abandoned’’. 2011—Subsec. (b)(2)(A)(ii). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘181’’. Subsec. (b)(2)(A)(iii). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘111(b)’’. Subsec. (b)(2)(A)(iv). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘16’’. Subsec. (d). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘17’’. Subsec. (e). Pub. L. 112–29, § 8(a), added subsec. (e). 1999—Pub. L. 106–113 amended section catchline and text generally. Prior to amendment, text read as fol- lows: ‘‘Applications for patents shall be kept in con- fidence by the Patent and Trademark Office and no in- formation concerning the same given without author- ity of the applicant or owner unless necessary to carry out the provisions of any Act of Congress or in such special circumstances as may be determined by the Commissioner.’’ 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2012 AMENDMENT Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litiga- tion commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title. EFFECTIVE DATE OF 2011 AMENDMENT Pub. L. 112–29, § 8(b), Sept. 16, 2011, 125 Stat. 316, pro- vided that: ‘‘The amendments made by this section [amending this section] shall take effect upon the expi- ration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent application filed before, on, or after that ef- fective date.’’ Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by of Pub. L. 106–113 effective Nov. 29, 2000, and applicable only to applications (including international applications designating the United States) filed on or after that date, and applications published pursuant to subsec. (b) of this section result- ing from an international application filed before Nov. 29, 2000 not to be effective as prior art as of the filing date of the international application, but to be effec- tive as prior art in accordance with section 102(e) of this title in effect on Nov. 28, 2000, see section 1000(a)(9) [title IV, § 4508] of Pub. L. 106–113, as amended, set out as a note under section 10 of this title. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade. STUDY OF APPLICANTS FILING ONLY IN UNITED STATES Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4502(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–562, provided that: ‘‘(1) IN GENERAL.—The Comptroller General shall con- duct a 3-year study of the applicants who file only in the United States on or after the effective date of this subtitle [see section 1000(a)(9) [title IV, § 4508] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 10 of this title] and shall provide the results of such study to the Judiciary Committees of the House of Representatives and the Senate. ‘‘(2) CONTENTS.—The study conducted under para- graph (1) shall— ‘‘(A) consider the number of such applicants in rela- tion to the number of applicants who file in the United States and outside of the United States; ‘‘(B) examine how many domestic-only filers re- quest at the time of filing not to be published; ‘‘(C) examine how many such filers rescind that re- quest or later choose to file abroad; ‘‘(D) examine the status of the entity seeking an application and any correlation that may exist be- tween such status and the publication of patent ap- plications; and ‘‘(E) examine the abandonment/issuance ratios and length of application pendency before patent issuance or abandonment for published versus unpublished ap- plications.’’ § 123. Micro entity defined (a) IN GENERAL.—For purposes of this title, the term ‘‘micro entity’’ means an applicant who makes a certification that the applicant— (1) qualifies as a small entity, as defined in regulations issued by the Director; (2) has not been named as an inventor on more than 4 previously filed patent applica- tions, other than applications filed in another country, provisional applications under sec- tion 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid; (3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median house- hold income for that preceding calendar year, as most recently reported by the Bureau of the Census; and (4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross in- come, as defined in section 61(a) of the Inter- nal Revenue Code of 1986, exceeding 3 times the median household income for that pre- ceding calendar year, as most recently re- ported by the Bureau of the Census. (b) APPLICATIONS RESULTING FROM PRIOR EM- PLOYMENT.—An applicant is not considered to be named on a previously filed application for pur- poses of subsection (a)(2) if the applicant has as- signed, or is under an obligation by contract or law to assign, all ownership rights in the appli- cation as the result of the applicant’s previous employment. (c) FOREIGN CURRENCY EXCHANGE RATE.—If an applicant’s or entity’s gross income in the pre- ceding calendar year is not in United States dol- lars, the average currency exchange rate, as re- ported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s or entity’s gross income