711.06 Abstracts, Abbreviatures, and Defensive Publications [R-2]
I. ABSTRACTS
Abstracts were prepared and published in accordance with the Notice of January 25, 1949, 619 O.G. 258. Each abstract includes a summary of the disclosure of the abandoned application, and in applications having drawings, a figure of the drawing. The publication of such abstracts was discontinued in 1953.
II. ABBREVIATURES
Abbreviatures were prepared and published in accordance with the procedure indicated in the Notice of October 13, 1964, 808 O.G. 1. Each abbreviature contains a specific portion of the disclosure of the abandoned application, preferably a detailed representative claim, and, in applications having drawings, a figure of the drawing. The publication of such abbreviatures was discontinued in 1965.
III. DEFENSIVE PUBLICATIONS
The Defensive Publication Program, which provided for the publication of the abstract of the technical disclosure of a pending application if the applicant waived his or her rights to an enforceable patent, was available between April 1968 and May 8, 1985. The program was ended in view of the applicant’s ability to obtain a Statutory Invention Registration.
An application was laid open for public inspection under the Defensive Publication Program and the applicant provisionally abandoned the application, retaining rights to an interference for a limited period of 5 years from the earliest effective U.S. filing date.
The defensive publication of an application precluded a continuing application (divisional, continuation-in-part, or continuation) filed under 35 U.S.C. 120 from being entitled to the benefit of the filing date of the defensively published application unless a continuing application was filed within 30 months after the earliest effective U.S. filing date. Where a similar application was not filed until after expiration of the 30 month period, the application was examined, but it was not entitled to claim the benefit of the earlier filing date of the defensive publication application.
If a first continuing application was filed within 30 months from the earliest U.S. effective filing date of the application published under the Defensive Publication Program, later copending continuing applications (such as divisions if restriction is required during the prosecution of the first continuing application) were not barred and could be filed during the pendency of the first continuing application, even though beyond the 30 month period, without loss of the right to claim the benefit of the filing date of the Defensive Publication application.
The Defensive Publication Abstract and a selected figure of the drawing, if any, were published in the Official Gazette. Defensive Publication Search Copies, containing the defensive publication abstract and suitable drawings, if any, were provided for the application file, the Patent Search Room and the examiner’s search files. A defensive publication is not a patent or an application publication under 35 U.S.C. 122(b); it is a publication. Therefore, it is prior art only as of its publication date. See MPEP § 2136.
The defensive publication application files are maintained in the File Information Unit (Record Room).
Defensive Publication Number
Distinct numbers are assigned to all Defensive Publications published December 16, 1969 through October 1980, for example.
For Defensive Publications published on and after November 4, 1980, a different numbering system is used.
The revised numbering system is as follows:
Defensive Publications are included in subclass lists and subscription orders. The distinct numbers are used for all official reference and document copy requirements.
A conversion table from the application serial number to the distinct number for all Defensive Publications published before December 16, 1969 appears at 869 O.G. 687.
711.06(a) Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References [R-2]
It is important that abstracts, abbreviatures, and defensive publications (O.G. Defensive Publication and Defensive Publication Search Copy) be referred to as publications.
These printed publications are cited as prior art under 35 U.S.C. 102(a) or 102(b) effective from the date of publication in the Official Gazette. See Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973) and Ex Parte Osmond, 191 USPQ 340 (Bd. App. 1976). See also MPEP § 2136.
An application or portion thereof from which an abstract, abbreviature or defensive publication has been prepared may be used as a reference under 35 U.S.C.102(a), effective from the actual date of filing in the United States, only for evidence of prior knowledge of another.
These publications may be used alone or in combination with other prior art in rejecting claims under 35 U.S.C. 102 and 103.
Defensive Publications are listed with "U.S. Patent Documents." Abstracts and Abbreviatures are listed under "Other References" in the citation thereof as follows:
- (A) Abstracts and Abbreviatures
Brown, (abstract or abbreviature) of Serial No. ........, filed ............., published in O.G. ........., on ........, (list classification).
- (B) Applications or designated portions thereof, abstracts, abbreviatures, and defensive publications
Jones, Application Serial No. ........, filed ............., laid open to public inspection on ............... as noted at .......... O.G. (portion of application relied on), (list classification, if any).