A. Publication of U.S. Patent Applications
Publication of a non-provisional patent application by the U.S. Patent Office occurs 18-months from its earliest effective priority date. See MPEP 1120. The earliest effective priority date is the earlier of the patent application’s filing date or the filing date of an earlier patent application that a claim of priority is properly made to. While non-provisional patent applications can be published, provisional patent applications are not published with a few exceptions.
1. What Does Publication Mean?
When a U.S. patent application is published, the patent application is made publicly available for download (see Sample Published Patent Application) and entire file history for the patent application can be viewed by anyone using Public PAIR. In other words, not only can any third-party see your patent application they can also see all of the Office Actions sent by the U.S. Patent Office rejecting your patent application and all of your Responses/Amendments filed with the U.S. Patent Office. In addition, your published patent application can become prior art for any later filed patent applications by others – or you.
2. When Publication is Required
Publication of a U.S. patent application is required by the U.S. Patent Office if you (i) have filed or (ii) intend to file in a foreign country or an international patent application for the invention. For example, if you filed a PCT international patent application 30 days prior to your U.S. patent application, the U.S. patent application will have to be published within 18 months of the earliest effective priority date.
3. When Publication is Discretionary
If the invention disclosed in the patent application has not been and will not be the subject of an application filed in a foreign country or a multilateral international agreement (e.g. PCT), then the patent applicant has the choice of either having their patent application published or not published. If the patent applicant does not want their patent application published, they must affirmatively make the request with the filing of the U.S. patent application by including a Nonpublication Request (see discussion below).
B. Reasons to Publish Your Patent Application
Generally speaking, larger businesses typically want a patent application published unless there are reasons for secrecy. Below are some typical reasons to have a patent application published:
- Required by U.S. Law (if Filing Foreign). If you have filed or intend to file in a foreign country or an international patent application, then you are required under U.S. law to have your patent application published.
- Provisional Rights. If a patent is granted, you may receive a reasonable royalty for infringing activity occurring from the date of publication of the patent application to the issue date of the patent. See 35 U.S.C. 154(d).
- Competitors. Publication of a patent application places competitors on notice that you are developing technology in a certain area.
- Searches. Your published patent application will show up in patent searches by USPTO Examiners, competitors and others attempting to patent similar technologies.
- Prior Art. The published patent application can be used by the U.S. Patent Office to reject third-party patent applications for related technology regardless if your patent application is later abandoned or granted as a patent.
- Recognition. Some inventors want recognition for their work and publication of a patent application ensures that their technology will be fully disclosed with credit made to them even if a patent is not granted.
C. Reasons Not to Publish Your Patent Application
Generally speaking, inventors seeking to license their patent rights typically want a patent application to remain confidential unless they intend to file in a foreign country. Below are some typical reasons to have a patent application remain nonpublished:
- Confidentiality of Invention. By not publishing your patent application, the invention disclosed in the patent application will remain confidential until at least a patent is granted. If you do not anticipate public usage or disclosure of your invention within 18-months after filing your patent application, this can prevent competitors from seeing your technology. Also, if you abandon your patent application, a competitor will not be able to see your technology filed with the USPTO.
- Confidentiality of Patent Documents. When a patent application is not published, all communications to and from the U.S. Patent Office remain confidential to all third-parties until a patent is granted.
- Loss of Trade Secrets. If your patent application includes any trade secrets, the trade secrets will remain protected by not publishing the patent application (if the application is published or granted as a patent, any trade secrets in the patent application are automatically lost).
- Confidentiality of Application Status. If your patent application is not published, no third-party will be able to determine the status of your patent application.
- No Prior Art. If you abandon this patent application and it is not published, the patent application cannot be used as prior art by the U.S. Patent Office to reject a later filed patent application by you for a related invention.
- Can Rescind Later. You can always rescind a non-publication request after the application is filed (note, you cannot file a non-publication request after a patent application is filed).
D. Nonpublication Requests
1. Include a Nonpublication Request with Patent Application
To prevent publication of a U.S. patent application, you will need to file a Nonpublication Request contemporaneously with your patent application. You cannot file this Nonpublication Request after the patent application has been filed. Hence, if you fail to include a Nonpublication Request with your patent application filed with the U.S. Patent Office, your patent application will be published after 18-months from the earliest effective priority date unless you expressly abandon the patent application prior to publication.
2. You Can Rescind a Nonpublication Request Anytime
You can rescind a Nonpublication Request at anytime if you want your patent application published by the U.S. Patent Office. You do not need a reason to rescind your Nonpublication Request, but if you decide later to file a patent application in a foreign country you are required to file the Nonpublication Request within 45 days of filing the foreign patent application to avoid abandonment of your patent application.
E. Notifying U.S. Patent Office if Foreign or International Patent Application Filed
If you file a foreign or international patent application for the invention, you are required within 45 days after the date of filing such non-U.S. application to notify the U.S. Patent Office and rescind the Nonpublication Request. Failure to timely notify the U.S. Patent Office will result in abandonment of your U.S. patent application. See 35 U.S.C. 122(b)(2)(B)(iii).
F. General Recommendations
Publication of a patent application is something that needs to be taken seriously and on a case-by-case basis prior to filing your patent application. Consult with your patent attorney about your objectives with the patent application and the invention. If maintaining the confidentiality of your patent application is important and you do not intend to file in a foreign country, then it may be prudent to include a Nonpublication Request with your patent application filing (you can always rescind the Nonpublication Request later if you want). If you prefer that your patent application be published by the U.S. Patent Office, then publication of your patent application may be prudent. If you intend to file for patent protection in a foreign country, then publication of your patent application is required. In the end, you have to follow the law and decide what available option is best for you and your invention. As always, consult with a patent attorney regarding this important issue before making a formal decision.