Publishing of Patent Applications

Posted Saturday, February 26, 2011.

Did you know the Patent and Trademark Office will reveal your invention 18 months after your application is filed by default? Isn’t the office supposed to keep your invention a secret until it’s patented? Is there a way to keep it confidential?

On one of the forms that accompanies a patent application to the Patent and Trademark Office (“PTO”), there is a section called “Publication Information”. The form is the Application Data Sheet – what practitioners and the PTO refer to as the “ADS” – and it mostly contains demographic information about the inventor. In the “Publication Information” section, there’s a checkbox called “Request Not to Publish”. By default, the contents of a patent application are published 18 months after filing. An inventor may, but not always, be able to prevent the application from being published.

It usually takes 3 years for a patent to issue from the time the application is filed. My clients have been surprised to find out that the PTO would disclose what they’ve invented before a patent issues. The general rule for most of the PTO’s history is that they keep the applications that are before them confidential. Has something changed?

Yes, in fact something did change. Several years ago, in the interest of harmonization with patent procedures in patent offices around the world, the United States began publishing applications just as other countries do. There is increased pressure for our patent law to be consistent with that of the rest of the world. One significant proposed change is for the United States to move from a “first to invent” system to the “first to file” system, but that’s a topic for another day.

With respect to application publishing, there are some drawbacks for U.S. inventors that result:

  1. If the patent never issues, prior to application publishing, an inventor could choose to practice the invention as a trade secret and still have some level of protection of intellectual property rights. But once the application publishes, it can’t be a trade secret any longer either.
  2. The patent office charges the inventor a publication fee! (Adding insult to injury, naturally.)

So why does the PTO have a checkbox on the Application Data Sheet called “Request Not to Publish”? If the inventor does not plan to seek patent protection outside the United States, then there are no world harmonization concerns and the PTO will grant the inventor’s request not to publish the application.

There is one very important wrinkle, which is that should the inventor decide to seek patent protection internationally after asking the PTO not to publish the application, the PTO must be notified of that decision. They will then publish the application as they would by default. But failing to inform the PTO that the inventor is seeking patent protection overseas in that instance means the application will automatically go abandoned. In other words, it will receive no further consideration for a United States Patent.

The upshot of all of that is that for clients of mine who only seek U.S. patent protection of their invention, I advise them not to publish. Otherwise it’s more expensive and forecloses the possibility of ever invoking trade secret protection. But inventors who take this advice and later change their minds about going for international patents must inform the PTO. The consequences of not doing so – a probable loss of your patent rights in the invention – are drastic.

EDIT: here is one reason why you might elect for the application to be published even when there is an option not to.

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