Should I Publish My Patent Application – Advantages and Disadvantages

March 17, 2022

David Stiennon

Partner

What is patent publication?

The United States Patent and Trademark Office publishes online the text and any drawings of a US application after 18 months from the US filing date, or if the application is based on an earlier application, from the filing date (priority date) of that earlier application. The public is then free to search and examine not only the text of the application, but all documents in the application file.

Is there a way to avoid publication?

If an applicant files a nonpublication request at the time of filing the application, in which the applicant certifies that the invention disclosed in the application has not and will not be the subject of an application filed in another country (or a multilateral organization such as the EPO or PCT) which publishes after 18 months, then the USPTO will not publish the application.

When must the nonpublication request be made?

The nonpublication request must be filed at the time of filing the application.

Is there any way to prevent publication if I failed to file a nonpublication request?

Possibly. A petition requesting express abandonment of the application in order to avoid publication can be filed with the appropriate fee. However, the petition must be filed while there is still sufficient time to permit the Office to recognize the abandonment and remove the application from the publication process. There is no guarantee that the withdrawal will be effective.

Can I file a foreign application after filing a nonpublication request?

Yes. The nonpublication request can be rescinded at any time. If an applicant determines to file a foreign application based on the US application after the filing of the nonpublication request, the applicant should rescind the nonpublication request before filing the foreign application or notify the Office of the foreign filing no later than 45 days after the foreign filing. Failure to notify the Office in time will result in the U.S. application being regarded as abandoned.

What if my foreign application does not have the full disclosure of my U.S. application, do I have to publish the more extensive disclosure?

If the foreign application is less extensive that the U.S. application, the applicant may submit a copy of the U.S. application which has been redacted to eliminate the disclosure which was not included in the foreign application. Only the redacted application will be published. However, the redacted copy must be received in the Office within 16 months of the earliest priority date.

Can I request publication prior to 18 months?

A Request for Early Publication may be submitted with the appropriate fee as early as desired. Once the application is complete and an executed declaration and filing fee have been submitted the Office will publish the application “as soon as possible.” The publication process will take about 14 weeks. As the average pendency of an application was 23.3 months in FY 2020, and publication regularly occurs after 18 months, the request for early publication can result in a significantly extended period of pre-grant rights.

Are there situations where the application will not be published even if no nonpublication request is filed?

The application will not be published if 1) it is no longer pending; 2) it is national security classified, subject to a secrecy order, or under national security review; or 3) the application issues as a patent in sufficient time to be removed from the publication process.

What are the advantages of publishing?

If the application is published, the patent owner obtains provisional rights to reasonable royalties from an infringer from the date of publication, but only if the claimed invention in the issued patent is substantially identical to the invention claimed in the published application, the infringer has had actual notice of the published application and the claim is made within 6 years of the date the patent issues. (35 U.S.C. 154(d)(1)-(4))

Another benefit of publication is that the published application becomes prior art which is classified and a part of the Patent and Trademark Office’s searchable database. If the application fails to be patented, the publication is prior art that would be an obstacle to someone obtaining a patent that covers that product.

What does it mean for the claims in the application to be “substantially identical” to the patent’s claims?

If amendments are made to the application which narrow the scope of the patent in a substantive way, it is likely that the issued patent claims will be considered not substantially identical to the published claims. However, not all amendments to overcome prior art will preclude a finding of provisional rights. The court will make the determination as to whether the published and issued claims are substantially identical.

What is “actual notice” of the published application?

Actual notice could take the form of a letter to the accused infringer, particularly calling his attention to the published application (First Years, Inc. v Munchkin, Inc. (W.D. Wis., 2008)). However, the direct intervention of the patent owner is not required if the accused infringer learned of the application on his own (K-TEC, Inc. v Vita-Mix Corp. (D. Utah, 2010)). Yet merely being supplied with the application in a collection of thousands of documents need not be considered actual notice (Arendi Holding Ltd. v Microsoft Corp. (D. Del. 2010)). It may be sufficient to alert the accused infringer of the published application without pointing out the “specific manner by which a defendant is believed to be practicing the inventions” (First Years). Applicants should consult an attorney before notifying an infringer of a published application, as a targeted patent claim analysis may be needed in states with anti-trolling legislation.

What are the advantages of not publishing?

Once the application is published, it becomes public, and anyone will be able to access the Patent and Trademark Office file on the application, making every communication between the Office and the applicant public. This will give advance notice to competitors of the scope of the patent, giving them a head start on designing around any claims. Avoiding publication keeps the inventor’s patent strategy secret from competitors for as long as possible.

When will I learn the publication date of my application?

The projected publication date will be printed on the official Filing Receipt once the application is complete. The date will normally be the later of eighteen months from the filing or priority date and fourteen weeks from the mailing date of the Filing Receipt.

How will I learn the Publication Number of my published application?

The Office will send a Notice of Publication of Application, although this may be a week or more after the publication date.

How can I correct errors in a published application?

A Request for Republication can be filed to correct errors in the publication including errors in the specification, claims or drawings. If the applicant pays the appropriate fees, the request may be submitted at any time. No fees are required if the republication is to correct a material mistake of the Office which is apparent from Office records. However, such a request for republication without fee must be filed within two months from the date of the original publication.

Is there any reason to republish the application other than correcting errors?

If the claims have changed during prosecution from the published application, an applicant may wish to republish the application with the new claims to obtain useful provisional rights, since the published claims must be “substantially identical” to the claims found in the issued patent. However, this may only be effective when the prosecution of the application is drawn out, for example because of an appeal or other exceptional circumstances.

References

Statute establishing provisional rights: 35 U.S.C. 154(d)(1)-(4)

Sharick Naqi, “Comment on Provisional Patent Rights,” 10 Nw. J. Tech. & Intell. Prop. 595 (2012).

https://scholarlycommons.law.northwestern.edu/njtip/vol10/iss7/6

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