Once you have decided to file a patent application, you should also consider whether or not you want it published. There are strategic reasons for deciding to publish or not to publish, hinging on what your business needs, objectives, and concerns are.
The Nuts and Bolts of How Patent Applications Publish
Generally speaking, under 35 USC §122, once a patent application is filed with the United States Patent and Trademark Office (USPTO), the patent application will be published after an 18-month period from the earliest filing date. This means that the entire file of the patent application, with all the documents filed along with it, will be publicly discoverable and searchable via the Public Patent Application Information Retrieval (PAIR) system hosted by the USPTO. An applicant can request that an application be published earlier than the expiration of the 18-month period as well.
There are also exceptions to publication. For example, if the application is determined to be abandoned, subject to a government secrecy order, or no longer pending, then it will not be published. Also, provisional applications and design patent applications are not published. Additionally, the patent applicant can file a Nonpublication Request pursuant to Section 35 USC §122(b), as a deliberate, strategic way to keep a patent application from being published. To qualify for the Nonpublication Request, the applicant must be able to certify that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing. If the patent applicant files a Nonpublication Request, and yet later files a patent application in another country, then the patent applicant must notify the USPTO no later than 45 days after filing the international application.
Benefits to Publishing Your Patent Application
Publishing of your patent application is another tool in your toolbox for navigating the patent process similar to any other decision you make when it comes to a patent portfolio. This early part of the life cycle of a patent has benefits that you can take advantage of should they be right for you and your particular business standpoint.
- International Patent Portfolios: As mentioned above, if you do business both in the United States and internationally, publishing your patent application may not simply be a strategic move; it might be required. That is, if you were to file a patent application on an invention in the United States, but you also want to file a patent for that same technology and invention in Japan because perhaps you do a lot of business there, the USPTO requires that the US patent application be published.
- Putting Others on Notice: Publishing your patent application means that your competitors can see that you are working on technology in a certain area. This helps dissuade competitors from similar areas, which can be helpful. Once published, your application will show up in patent searches by competitors, by others looking to patent in a similar space, and by USPTO examiners.
- Making the Most of Provisional Rights: If you were to be granted the patent later, and others had infringed on your patent rights in the interim between filing and obtaining the patent, you could potentially receive royalties on that infringement dating from the date of publication of the patent application.
- Becoming Part of the Prior Art: Even if you are not ultimately granted the patent or perhaps you abandon it, if your patent application is published, it becomes a part of the fabric of the prior art. This means that USPTO examiners can use the patent application materials to reject other third-party applications for similar inventions in that space.
Confidentiality Concerns: Considerations for Non-Publication
Reasons to withhold publication of patent applications exist that may provide a significant incentive to certain businesses keen on confidentiality.
- Keeping It All Confidential: By withholding publication, the existence of the invention, and any documents filed along with the patent application stay confidential until the patent is granted. For some companies, not publishing the patent application means being able to avoid giving a heads-up to your competitors on your plans.
- Staying Out of the Prior Art: Not publishing the patent application means that it will not become part of the fabric of the prior art, and therefore as the flipside of the reason above, a USPTO examiner cannot use it as a reason to reject another patent application. This can be helpful to you if you happen to be the one to file a future patent application for technology that is similar.
- Strategic Maneuverability: The federal statute 35 USC §122 allows you to rescind your Nonpublication Request after you have filed it with the patent application, but you do not get the same flexibility the other way around. That is, once you have filed your patent application, you cannot file a Nonpublication Request. This means you can change your mind if you decide you want to publish your patent application after all, which is especially critical in international filing situations.
Determining the Right Strategy for You
Each business is different, and different concerns and goals merit careful consideration for what path you want to take regarding publishing your patent application. An experienced patent attorney can help you think through which path would best suit your business objectives.