Jap filing after non-pub request, 45 days

2. A registered practitioner filed in the USPTO a client’s utility patent application on December 30, 2002.

The application was filed with a request for nonpublication, certifying that the invention disclosed in the U.S.

application has not and will not be the subject of an application in another country, or under a multilateral

international agreement, that requires eighteen month publication. Subsequently, the client files an application

in Japan on the invention and some recent improvements to the invention. The improvements are not disclosed or

supported in the utility application. Japan is a country that requires eighteen month publication. Two months

after filing the application in Japan, and before filing any other papers in the USPTO, the client remembers that

a nonpublication request was filed and informs the practitioner about the application that was filed in Japan.

Which of the following courses of action is in accordance with the USPTO rules and the procedures set forth in

the MPEP?

(A) The application is abandoned because the practitioner did not rescind the nonpublication request and provide

notice of foreign filing within 45 days of having filed the application in Japan. The applicant must now file a

petition and fee to revive under 37 CFR 1.137(b).

(B) The application is abandoned because the applicant did not rescind the nonpublication request before filing

the application in Japan. The applicant must now file a petition and fee to revive under 37 CFR 1.137(b).

(C) The applicant should file an amendment to the specification of the U.S. application, adding the recent

improvements to the disclosure in the specification.

(D) The application is abandoned because the applicant did not rescind the nonpublication request by notifying the

Office under 37 CFR 1.213(c) within the appropriate time. The applicant must now file a petition and fee to revive

under 37 CFR 1.137(b).

(E) The applicant could today notify the USPTO of the foreign filing. It is not necessary to file a petition and

fee to revive for the application to continue to be examined in the USPTO.