Can patents be kept a secret?

Posted Saturday, May 9, 2015.

I am asked occasionally whether patents or patent applications can be kept secret.

Once a patent is issued, patentees can’t keep the patent secret. One function of a patent is to provide notice to the public of how not to infringe the patentee’s intellectual property right that was granted by the government. Just as a county recorder’s office keeps plat maps available for review which show the boundaries of real property obtained by landowners, the patent office maintains a patent database which shows the boundaries of intellectual property obtained by patentees.

If the county did not keep such real property information and plat maps, nobody would know whether they were trespassing on private land. Similarly, if there was no means of accessing patents, the public would not be able to determine whether a proposed invention would “trespass” on a patentee’s intellectual property (i.e. infringe the patent).

However, patent applications may be kept secret, but that usually includes only patent applications filed in the U.S. Patent and Trademark Office.

Patent applications are published in the U.S. by default 18 months after filing. In the U.S., applicants may request that the patent office not publish a patent application at the time the application is filed. In such a case, the invention would not be made public by the patent office until such time as the patent office issued the patent. If the application never matured into a patent and non-publication had been requested at the time of filing, the contents would never become public.

On the other hand, while an application is still pending, it can be useful to be able to serve the publication on third parties who may be infringing a patent that would eventually issue. Doing so provides notice of possible infringement, which may entitle the applicant to damages for a period beginning from serving the notice. For that reason, I often request early publication of patent applications for my clients, such that the application is published only four months after filing instead of 18. (There is no patent office fee for requesting early publication.) Unless a client specifically tells me they want to keep the invention a secret, I want them to have the publication available as a tool for serving competitors if needed.

Outside of the U.S., patent applications usually can not be kept secret because the World Intellectual Property Organization doesn’t permit it. One may not request non-publication when filing an international patent application. So, if the applicant files an international application claiming priority to a U.S. application, the applicant has no means of requesting non-publication of the international application and it will be published 18 months after filing. In fact, if non-publication was originally requested upon filing in the U.S., and the applicant later decides to file internationally, the non-publication request must be rescinded.

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