Publication, Nonpublication, and Early Publication of Patent Application-The Strategy

Patent application will be published after 18 months from the earliest filing date. Publication will make the invention to the public's knowledge. If the application fails to mature into a patent, the public will be able to use the knowledge of the invention without infringement. How to prevent it?

Publication requirement Under  35 U.S.C. § 122(b)

Under the U.S. patent laws, a nonprovisional utility application will be published after 18 months from the earliest filing date for which a benefit is sough. 35 U.S.C. § 122(b)(1)(A).  This means that if a nonprovisional application is claiming the benefit from a provisional application, the 18 months will start from the filing date of provisional application, not the filing date of the nonprovisional application. For example, if the provisional application was filed near 12 months before, it will be expected that the nonprovisional application will become eligible to be published 6 months later.

Why publication of patent application matters?

When the descriptions of the invention disclosed in the nonprovisional application are published, the information of how to make the invention will be learned by the public. This disclosure to the public will be not a problem if the invention is eventually granted with patent, which will prevent the public from unauthorized make, use, import, sell, or offer to sell of the patented invention even the public learns the knowledge of the invention.  However, if the application fails to mature into a patent, or part of the application becomes abandoned due to a Continuation in Part application, the disclosed information of unpatented part of the invention will become public domain knowledge for everyone’s use.

As USPTO often advises to the application, the first office action is normally issued 14 months after filing of the nonprovisional application. It is possible that the publication is published even before the first office action is issued. Under such situation, there are two bad consequences: (1) competitors can have the chance to provide other publications that might have an effect of anticipation or obviousness to the application through Third Party Preissuance Submission. According to 35. U.S.C. 122(e), third party submission shall be made before the earlier of: (1) the later of (i) 6 months after publication or (ii) the issuance of first office action rejecting claims, or (2) date of a notice of allowance.  Therefore, if the application is published before the first office action, the door is open for others to submit publications that might be material to the determination of a patent application.  If the application is under nonpublication request, third party will have no idea when to submit a reference under Third Party Preissuance Submission.

How to prevent your invention being learned by the public

Under 35 U.S.C. § 122(b)(2)(B), an application can make a request of nonpublication upon filing of the nonprovisional utility application. This request of nonpublication can only be made at the time of filing. It cannot be made after filing. It has no cost to make a nonpublication request.

 If the application failed to request nonpublication at filing, the only way to make it is to file a continuation of the application, in which the application makes a request of nonpublication, and then abandon the prior application. This alternative way has to be submitted before the publication date. It will cost the applicant another filing fee. However, the continuation application can claim the filing date of the prior application and even the filing date of the referenced provisional application, if it is still within one year of the filing date of the provisional application. Therefore, it will not cause a loss of priority date.

Limitations to nonpublication request

Although nonpublication request can be made at applicant’s will, it has limitations.  When making nonpublication request, the applicant has to certify that the invention disclosed in the application has not and will not be filed in another application in another country or in a PCT.  If the applicant breaches such certification and file an application of the invention in another country or in a PCT, the consequence will lead to an invalidation of the US patent, unless a rescind of the nonpublication request is made within 45 days after the date of foreign filing.  35 U.S.C. §§ 122(b)(2)(B)(i)-(iii). This requirement is very strict, if the applicant is unwary of the slip of time, it can lead a devastating consequence.

Strategical concerns for publication or nonpublication

As discussed above, is it always worth requesting a nonpublication in every filing? Not Really. There are several strategic concerns while considering of nonpublication:

Effectiveness of trade secrete protection - Simple v. Complicate Invention

It has been established by the case laws that there is no misappropriation of trade secrete if the public discover and exploit the trade secrete through reverse engineering of products in the public domain. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 155, 109 S. Ct. 971 (1989); Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1329 (Fed. Cir. 2013). Therefore, to keep the invention in the protection of trade secret will work only when the invention is complicate enough from being reversely engineered or simply copied. The subject matter suitable for trade secret, for example, will be the formula of chemical compositions, manufacturing process, and computer software, business methods. Subjects unsuitable for trade secret may include: the inventions consisted with structural elements that can be easily dissembled and copied, electronic circuits that can be easily mimic and tested, toys, or simple machines.  These simply structural inventions can be figured out from the physical product of the invention. Therefore, shield of the drawings or descriptions disclosed in the patent application from public’s eyes does not help to prevent public from learning and copying it.

Market Life Cycle

While simple mechanical invention is not that necessary to request nonpublication since it not easy to be protected under trade secret, the market life cycle of the invention might place a weight against publication. If the market time to sell the product made out of the invention is very short before the market become mature or declined, the time leading to produce and place the product in the market will play an essential role in determining the decision of nonpublication. Under a short market life, the inventor wants to disclose the product to the market and make profit before the market declines. Under such time constrain, it is import to delay other copiers from putting similar product into the market to compete the sales.  Therefore, if the patent application of the invention is kept unpublished, the copiers will learn the invention only when the product becomes available in the market, or even only when it becomes popular in the mature market. If the application of the invention is published, the copier might decide to take a risk and start making product from the knowledge disclosed in the application before they see the actual product of the invention. Once the invention fails to secure a patent, the copier might have sold thousands of the products even before the inventor put the invention into product, and the inventor will have no recourse to recoup the loss. Thus, in a short market lift cycle, it might be better off to request nonpublication of the application.

Stop others from applying patents

One purpose of the publication of an application is to become a prior art for the purpose of anticipation or obviousness rejection to other’s patent application. One rule to become a prior art is that the reference prior art must be dated before the priority date of other’s patent application.

When a patent application is still pending (still in the process of examination), the publication date of the application will be the date to determine whether the publication is a prior art to others.  When the patent application is matured into a patent, the priority date of the patent application will be the date eligible as a prior art.  Therefore, when there is a field of invention that has many competitors, the publication of the application, or even earlier publication (published less than 18 months by a request of early publication under 37 CFR 1.219) before competitor’s filing of application or the date of claimed priority may throw some hurdles on competitor’s road of patent prosecution. Having said that, it needs to balance the risk from publication that may open the door for third party to submit references under Third Party Preissuance Submission as discussed above, and the risk of becoming public domain knowledge when it fails to secure a patent.

Whether foreign patent applications are expected

If the applicant has anticipated and planned to file foreign applications closely after the filing US patent application, it may make no sense to request nonpublication when filing the US patent application. However, if the applicant is not sure whether to file foreign applications, it may be more prudent to consider other factors mentioned above and determine whether to request nonpublication.  After all, the nonpublication request can be rescinded as long as USPTO is informed within 45 days of filing a foreign application. Therefore, if the applicant is not sure about publication or not, it would be better off to request nonpublication first, and rescind it when situation changes.

Conclusion

The patent attorney shall have an obligation to inform the client-applicant about the option to publish or not to publish before filing the application. However, the applicant shall think strategically about whether to request nonpublication before filing the application, which is most likely a business call for the applicant, not for the patent attorney.