Chapter   1100  Statutory Invention Registration (SIR)
---SECTION---1101 Request for Statutory Invention Registration (SIR)

35 U.S.C. 157 Statutory invention registration.

(a) Notwithstanding any other provision of this title, the Com missioner
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 Commissioner;

(3) waives the right to receive a patent on the invention within such
period as may be prescribed by the Commissioner; and

(4) pays application, publication, and other processing fees established
by the Commissioner.

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statutory invention registration may not be published unless the issue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 Commissioner 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 Secretary of Commerce 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.

37 CFR 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 Section  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
Section  1.104(c)(5).

A request for a statutory invention registration (SIR) may be filed at
the time of filing a nonprovisional application for patent, or may be
filed later during pendency of a nonprovisional application. The fee
required (37 CFR 1.17(n) or (o)) depends on when the request is filed.
The application to be published as a SIR must be complete as set forth
in 37 CFR 1.51(b) including a specification with a claim or claims, an
oath or declaration, and drawings when necessary. Applicants should use
the format set forth in form PTO/SB/94, Request for Statutory Invention
Registration. A provisional application cannot include a request for a
SIR.

Requests for statutory invention registrations, including those
submitted in utility, plant, and design applications, are handled in
Examining Group 3640. Accord ingly, incoming new applications which
include a request for a SIR will be processed like other new
applications in the Office of Initial Patent Examination (OIPE) and then
forwarded to Group 3640. Group 3640 may be assisted by other examining
groups when the subject matter of the application makes it necessary or
desirable. For example, Group 1600 may handle issues under 35 U.S.C. 112
in applications involving biotechnology.

Applications which are already assigned to examining groups other than
Group 3640 and which receive a request for a SIR (or any other
indication that they are to be published as a SIR) should be forwarded
with a brief explanation to Group 3640 via the technical support staff
of the examining group to which the application is assigned. The
forwarding group should first determine whether an Office action has
been mailed in the application and issue proper SIR disposal credit to
the examiner who prepared any such action where appropriate.  Group 3640
examiners will determine whether the request for a SIR is proper.
Non-Group 3640 examiners should make no comment to the applicant
regarding what effect the filing of a request for a SIR may have had on
any outstanding rejection.

Form PTO/SB/94. Request for Statutory Invention Registration[GRAPHIC]

[GRAPHIC]

---SECTION---1103 Examination of a SIR

37 CFR 1.294 Examination of request for publication of a statutory
invention registration and patent application to which the request is
directed.

(a) Any request for a statutory invention registration will be examined
to determine if the requirements of Section  1.293 have been met. The
application to which the request is directed will be examined to
determine (1) if the subject matter of the application is appropriate
for publication, (2) if the requirements for publication are met, and
(3) if the requirements of 35 U.S.C. 112 and Section  1.293 of this part
are met.

(b) Applicant will be notified of the results of the examination set
forth in paragraph (a) of this section. If the requirements of Section 
1.293 and this section are not met by the request filed, the notifica
tion to applicant will set a period of time within which to comply with
the requirements in order to avoid abandonment of the application. If
the application does not meet the requirements of 35 U.S.C. 112, the
notification to applicant will include a rejection under the appropriate
provisions of 35 U.S.C. 112. The periods for reply established pursu ant
to this section are subject to the extension of time provisions of
Section  1.136. After reply by the applicant, the application will again
be considered for publication of a statutory invention registration. If
the requirements of Section  1.293 and this section are not timely met,
the refusal to publish will be made final.  If the requirements of 35
U.S.C. 112 are not met, the rejection pursuant to 35 U.S.C. 112 will be
made final.

(c) If the examination pursuant to this section results in approval of
the request for a statutory invention registration the applicant will be
notified of the intent to publish a statutory invention registration.

A Group 3640 examiner will determine whether the application in which a
request for a statutory invention registration has been filed is a
pending nonprovisional application. If the application was abandoned at
the time the request was filed, has been patented, or has been allowed
and the issue fee paid, the examiner should return the SIR request to
the requester accompanied by a Return of Statutory Invention
Registration Request to Requester notice (form PTOL-442).

If the application is pending, the examiner should ascertain whether an
Office action with a rejection under 35 U.S.C. 112 has been issued and
not replied to.  If so, and if there remains any time to reply to the
rejection, the examiner should send the applicant a courtesy notice
requiring a timely reply. If no time for reply remains, the application
is abandoned and the examiner should inform the applicant of this fact.

After the Group 3640 examiner has ascertained that all outstanding
rejections under 35 U.S.C. 112 have been replied to, the examiner should
verify that the request for a SIR meets the requirements of 37 CFR
1.293.  First, applicant should be notified of any defects in the
signature on the SIR request or of any inadequacy of the SIR fee.  A
1-month time period should be set for applicant to correct the signature
or fee before any further consideration of the SIR request is given.
Form PTOL-444 may be used for this purpose.  Next, applicant should be
given 1 month to correct any other informalities in the SIR request
under 37 CFR 1.293 and any informalities in the application under 37 CFR
1.294 using a Notice of Informal Statutory Invention Registration (SIR)
Request, form PTOL-445. The examiner should also determine whether the
application complies with 35 U.S.C. 112.  If not, a rejection with a
3-month shortened statutory period for reply should be made using a
Notice of Noncompliance with 35 U.S.C. 112 of application having SIR
Request, form PTOL-448.  Both form PTOL-445 and form PTOL-448 can be
mailed at the same time.  If they are, applicant should be given a
3-month shortened statutory period to reply to both forms.

If applicant's reply to form PTOL-445 does not correct the defects, the
SIR request should be finally refused using a Notice of Final Refusal of
Informal Statutory Invention Registration (SIR) Request, form PTOL-446. 
If applicant's reply to the rejection set forth on form PTOL-448 does
not bring the application into compliance with 35 U.S.C. 112, the
rejection should be made final.

After the application complies with 37 CFR 1.293, 37 CFR 1.294, and 35
U.S.C. 112, the examiner should determine whether the application is
involved in a pending interference. If so, applicant should be notified,
using form PTOL-449, that no decision will be made on the SIR request
until the interference proceedings are concluded.

If the applicant has lost priority of any claims due to a concluded
interference, applicant should be given 1 month, using form PTOL-449, to
cancel the lost claims (if a statutory invention registration is still
desired with claims on which priority was not lost) or to request
withdrawal of the request for statutory invention registration (if
further prosecution as to patentability is desired).  See MPEP Section 
1109. If none of the claims in the application was lost in interference,
and if the application complies with 37 CFR 1.293, 37 CFR 1.294, and 35
U.S.C. 112, then the application is in condition to be prepared for
publication. See MPEP Section  1107.

An application under secrecy order will be withheld from publication
during such period as the national interest requires, and the applicant
should be informed of this fact by using a Notice of Statutory Invention
Reg istration (SIR) Acceptance (Form D-11), form PTOL-452.

---SECTION---1105 Review of Final Refusal to Publish SIR

37 CFR 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
Commissioner accompanied by the fee set forth in Section  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
Section  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 rea sons 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 Section  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 Section  1.293 and this section are met.

An applicant who is dissatisfied with a final refusal to publish a SIR
for reasons other than compliance with 35 U.S.C. 112 may obtain review
by filing a petition as set forth in 37 CFR 1.295(a). The petition
should be directed to the Group Director of Examining Group 3640.

An applicant who is dissatisfied with a decision finally rejecting
claims under 35 U.S.C. 112 may obtain review by filing an appeal with
the Board of Patent Appeals and Interferences as set forth in 37 CFR
1.295(b).

---SECTION---1107 Preparing a SIR for Publication

In preparing a nonprovisional application with a SIR request for
publication, the examiner should fill out the face of the application
file wrapper in the same manner as in a non-SIR application.
Additionally, the examiner should add the notation "OK for SIR" in the
space provided for the primary examiner's signature. A form PTO-1547 is
attached to the "LABEL AREA" on the face of the file wrapper to indicate
that the application is for a statutory invention registration. An issue
classification slip (form PTO-270 or PTO-328) is filled out and attached
inside the file wrapper in the normal manner with the additional
notation of "SIR" added to the left side of the space allocated for the
patent number. The index of claims inside the file wrapper is filled
out, with the notation "* " indicating the claims to be published in the
SIR. If the application contains formal drawings, the final official
classification of the application and the figure to be published in the
Official Gazette are indicated as in non-SIR applications in the spaces
provided by the Draftsman's stamp. Otherwise, a yellow tag (form
PTO-1364) is attached to the file.

A Notice of Intent to Publish Statutory Invention Registration, form
PTOL-451, is prepared and sent to the applicant. Requirements for formal
drawings (allowing a 3-month shortened statutory period for reply) and
examiner's amendments may be attached to the Notice of Intent to Publish
Statutory Invention Registration as needed. The application is then
forwarded to Publishing Division.

---SECTION---1109 Withdrawal of SIR Request

37 CFR 1.296 Withdrawal of request for publication of statutory
invention registration.

A request for a statutory invention registration which has been filed
may be withdrawn prior to the date of the notice of the intent to
publish a statutory invention registration issued pursuant to Section 
1.294(c) by filing a request to withdraw the request for publication of
a statutory invention registration. The request to withdraw may also
include a request for a refund of any amount paid in excess of the
application filing fee and a handling fee of $130.00 which will be
retained. Any request to with draw the request for publication of a
statutory invention registration filed on or after the date of notice of
intent to publish issued pursuant to Section  1.294(c) must be in the
form of a petition pursuant to Section  1.183 accompanied by the fee set
forth in Section  1.17(h).

If a request to withdraw a SIR is filed in a nonprovisional application
which contains a SIR request before a Notice of Intent to Publish
Statutory Invention Registration has been mailed, the Group 3640
examiner should ascertain whether any outstanding rejection under 35
U.S.C. 112 is present in the application. If so, the examiner should
require a timely reply to the rejection using a Response to Request to
Withdraw Request for a Statutory Invention Registration, form PTOL-450.
After a timely reply to the rejection is received, the request to
withdraw the SIR request will ordinarily be granted and the application
forwarded for further examination to whichever examining group would
ordinarily examine the art area in which the application is
classifiable.

Any request to withdraw a SIR filed after the mailing date of the Notice
of Intent to Publish Statutory Invention Registration must be in the
form of a petition pursuant to 37 CFR 1.183 accompanied by the fee set
forth in 37 CFR 1.17(h). The Director of Group 3640 will inform the
applicant of the decision on the petition via a form PTOL-450 or
Response to Petition under 37 CFR 1.295(a), form PTOL-447.

Note that an original SIR application can be abandoned in favor of a
continuing application for a patent, claiming the filing date of the
earlier filed application, by filing an express abandonment of the
original application and a timely request or petition to withdraw the
request for a SIR prior to publication of the SIR.

---SECTION---1111 SIR Publication and Effect

37 CFR 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 Section  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.

Published SIR's are sequentially numbered in a separate "H" series,
starting with number "H1".

In accordance with 35 U.S.C. 157(c), a published SIR will be treated the
same as a U.S. patent for all defensive purposes, usable as a reference
as of its filing date in the same manner as a patent. A SIR is a
"constructive reduction to practice" under 35 U.S.C. 102(g) and "prior
art" under all applicable sections of 35 U.S.C. 102 including section
102(e). SIR's are classified, cross-referenced, and placed in the search
files, disseminated to foreign patent offices, stored in Patent and
Trademark Office computer tapes, made available in commercial data
bases, and announced in the Official Gazette.

The waiver of patent rights to the subject matter claimed in a statutory
invention registration takes effect on publication (37 CFR 1.293(c)) and
may affect the patentability of claims in related applications without
SIR requests, such as divisional or other continuing appli cations,
since the waiver of patent rights is effective for all inventions
claimed in the SIR and would effectively waive the right of the inventor
to obtain a patent on the invention claimed in the same application or
in any other application not issued before the publication date of the
SIR.  If an application containing generic claims is published as a SIR,
the waiver in that application applies to any other related applications
to the extent that the same invention claimed in the SIR is claimed in
the other application. Examiners should apply standards similar to those
applied in making "same invention" double patenting determinations to
determine whether a waiver by an inventor to claims in a SIR precludes
patenting by the same inventor to subject matter in any related
application.  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 statutory invention registration. See 37
CFR 1.104(c)(5).  A rejection as being precluded by a waiver in a SIR
cannot be overcome by a terminal disclaimer.

Examiners should note that the holder of a 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.

