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  • Writer's pictureCassandra L. Wilkinson

To See or Not to See -- Publication Options for Your Patent Application

Upon filing a new patent application in the United States, your patent attorney may ask you if you would like the United States Patent and Trademark Office to publish your patent application. This article discusses some of the issues that you should take into consideration prior to making this important decision.
Historically, publication was not even a question for inventors. In the years preceding the American Inventors Protection Act of 1999 (you can read a summary of the major provisions of the act here), all applications were kept secret until issuance. The Act included several major changes to patent law, and one of the significant revisions included the publication of all nonprovisional applications 18 months from the earliest effective priority date. The Act also included a provision for nonpublication; however, the applicant must make this request at the time of filing and certify that contents of the application will not be subject to international filing.
While it may seem that this provision of the act could be considered detrimental to inventors, one main intention of allowing publication was to enable a greater time period for inventors to obtain damages for patent infringement. Prior to the act, inventors were unable to collect for infringement damages incurred prior to issuance, as that is the time when the protected information would have been available to the public. With the onset of publication, inventors could also sue for some measure of damages incurred during the time period between publication and issuance. Section 154 of Title 35 of the United States Code describes, among other rights of patent owners, the rules for collecting damages during the time period between publication and the issuance of the patent.
Beyond the ability to collect for additional damages in cases of patent infringement, there are other benefits to the publication of your patent application. While it is well-known that patent lawsuits are lengthy and expensive endeavors, the ability to send a potential infringer a copy of your publication and to alert them to the penalties attributable to infringement may be sufficient to avoid future lawsuits and cease the infringing behavior. For other strategic reasons, some businesses may desire to notify competitors that they are working on particular technology.
Another reason in favor of publication is that once an application publishes, it becomes part of the field of prior art in its technology field. If a potential patent filer with a competing product performs a patentability search, your application has the possibility of showing up in their search. Unpublished applications have no such ability. This knowledge could prevent, or at least significantly limit the breadth of, said competitor’s application. By virtue of prior art status, your published application is also at the disposal of Patent Examiners and can be used to prevent, or again limit, the claims of competing patent applications. Even if your patent application never issues, publication enables others to view your efforts as a formal document, adding credibility to your attempt.
If the idea of publication is appealing to you for any of the above strategic reasons, there is yet another option at your disposal: Early Publication. Your patent attorney may file an Early Publication Request, and by filing the appropriate forms and paying any requisite fees, the application normally publishes within a four month time period. There are further options available to inventors who have actual evidence of infringement, but Early Publication is certainly one option for inventors who anticipate potential infringement issues or who simply desire the earliest publication date possible for other tactical aims.
On the other hand, if the confidentiality of your invention and maintaining any trade secrets contained therein are your predominant motivating factors, nonpublication is probably the right choice for your application. Until an application publishes or issues, competitors will not be able to see the details of an application. Once the application is published, competitors will have the ability to view the status of your application, the claims as presented, and eventually the entire file history, including all of the office actions and responses issued throughout the prosecution of the application. Also, if the application eventually abandons, the contents of your application will never be made public. Your own prior applications that are abandoned can be cited against you in new technology if the application has published. In other words, your own published applications can result in rejections of future patent applications.
If you are at all uncertain about publication, you may wish to opt for nonpublication since you will have the option of changing your mind at any point throughout the prosecution of the application. The ability to change one’s mind is perhaps the greatest benefit of an initial Request for Nonpublication. Many inventors who may desire to license their invention often opt for nonpublication since that also gives the licensee the decision of maintaining the secrecy of the invention.
In some situations, you do not have a choice. Most notably, if you intend to file any international applications, you must allow your application to publish. In fact, if you have previously filed a Request for Nonpublication and then file an international application, your U.S. application will become abandoned absent the filing of a Rescission of Previous Request for Nonpublication within 45 days of filing the international application. While your patent attorney will ensure that this crucial step in the process occurs, you should also be vigilant and perhaps opt for publication from the outset if you know that international filing of the application is probable.
In summary, the decision of whether or not to publish your application can have unintended consequences and should be considered prior to the filing of the application. Please discuss your goals and objectives in pursuing patent protection with your patent attorney so that he or she can help you make the right decision regarding publication.
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