Should We Request Non-Publication of Our Patent Applications?

For many companies, filing a patent application is a crucial first step to protecting their technology and inventions. Once a patent application is filed with the United States Patent and Trademark Office (USPTO), the patent application will, by default, be published about 18-months after the patent application’s earliest filing date. 

When the patent application publishes, the patent application can be searched and found by anyone using the USPTO’s Public Patent Application Information Retrieval (PAIR) system. The patent application also becomes available in every searchable patent database, some examples of which include Lens, Google Patents, the USPTO’s patft.uspto.gov, and the European Patent Office’s Espacenet. If you are interested in searching these databases, we have a blog post on how to do your own prior art search.

Did you know that companies can prevent their patent applications from being published by filing a non-publication request with the USPTO? Essentially, the non-publication request is a deliberate, strategic way to keep a patent application a secret and away from inquisitive eyes until it is granted by the USPTO. 

When must a non-publication Request be filed?

The non-publication request must be filed concurrently with the patent application. This requirement cannot be waived.

What must be included in a non-publication Request?

To make the non-publication request, a certification must be made to the USPTO that the invention disclosed in the application has not and will not be the subject of an application filed in another country. In short, there must not be an intent to file a similar patent application outside the United States. So, requesting non-publication is not an option for companies that intend to file:

• PCT applications and most foreign applications
• U.S. non-provisional applications, if there is an intention to file a PCT or foreign application
• U.S. provisional applications (since these applications are never published in the first place)

But what if a non-publication request is filed; can a similar PCT or foreign patent application be filed later because of a change in strategy and plans? The answer is yes, but with a caveat!

If a PCT or foreign patent application is filed outside the United States, the non-publication request must be rescinded before filing the PCT or foreign patent application. If, however, the PCT or foreign patent application is filed without rescinding the non-publication request, then the USPTO must be notified of this no later than 45 days after the filing of the PCT or foreign patent application.

The caveat is that requesting non-publication requires a certification statement that there will be no similar patent application outside the United States. If this statement isn’t true, then there is a likelihood that a false certification statement was made to the USPTO. False certification statements are never a good idea, and it can create all kinds of problems for the patent and for the individuals involved with the patent application.

SHOULD a non-publication Request be filed?

Whether a company wants its patent application to be published or not will depend on the company’s business needs, objectives, and concerns. In this section, we investigate some of the benefits of publishing a patent application, and some of the benefits of not publishing a patent application.

BENEFITS Of PUBLISHING a PATENT APPLICATION

Publishing a patent application has benefits that a company can take advantage of.

• Putting Competitors on Notice and Discouraging New Competitors: Publishing a patent application basically announces to the world that innovations in a certain area of technology may be covered by patent rights. This can dissuade existing competitors and potential, new competitors from innovating in similar areas, which can be helpful.

• Throwing Off the Competition: Some companies file patent applications that are tangential or unrelated to their core innovation.  Since patent applications can be accessed in every searchable patent database, these patent applications, when published, can create a “smokescreen” that might obfuscate the company’s true innovations (which might be unpublished).

• Making the Most of Provisional Rights: If the patent application later matures into a patent, and others infringed on the eventual patent in the time between filing the patent application and obtaining the patent, a company can potentially receive royalties on that infringement dating from the date that the patent application published. The caveat is that the claims in the published patent application must survive examination substantially unchanged and mature into the patent.  Some patent applications do pass through examination without amendment.  However, most claims are amended during prosecution.  As such, most patentees would not be able to take advantage of this benefit of publishing their patent application.

• Becoming Part of the Prior Art: If a patent application is published, it becomes prior art. This means that a USPTO examiner can use the published patent application to reject other third-party applications for similar inventions in that space.

• Subject to Third Party Submissions of Prior Art: A third party that is aware of a patent application can submit their best-known prior art to the USPTO for the examiner to consider. Third parties do this in an effort to prevent a competitor’s patent from being granted. While this may seem like a disadvantage, if the USPTO examiner determines that the submitted prior art does not negatively affect the patentability of the claims in the patent application, the eventual patent is inoculated against the prior art that was submitted. This can help stave off subsequent challenges to the patent, for example, in an Inter Partes Review. 

BENEFITS Of NOT PUBLISHING a PATENT APPLICATION

Withholding publication of a patent application might be useful for companies 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, this means being able to avoid giving a heads-up to your competitors on their innovation plans. The company’s products can be marketed as “Patent Pending” for as long as the patent application remains pending, but competitors cannot review the status of the patent application at the USPTO.

• Staying Out of the Prior Art: Not publishing the patent application means that it will not become prior art. Therefore a USPTO examiner cannot use it as a reason to reject another patent application. This can be helpful to the company intends to file a future patent application for technology that is similar. We have a blog post on how companies can void their own patents or publications as prior art. On the other hand, it also means that competitors can innovate in similar areas and the company’s patent application cannot be used to reject competing inventions in that space.

• Not Subject to Third Party Submissions of Prior Art: Since non-publication prevents a third party from being aware of a patent application, the third party cannot submit their best-known prior art to the USPTO for the examiner to consider. This can be useful for companies that would like a quick path a patent.

• Option to Abandon Application and Keep Innovation as a Trade Secret: Since non-published patent applications are not available to the public until a patent issues, requesting non-publication allows a company to retain the option to abandon the application and to keep the innovation a trade secret and out of the public domain.

TAKEAWAY FOR COMPANIES FILING PATENTS

Filing a patent application is just the first step to protecting innovation. A careful consideration needs to be made regarding whether that patent application needs to be published or kept secret. If you’re a technology company and you want to obtain valuable, enforceable patent rights, you need to hire a competent patent law firm to handle your patent filings. If you’d like to learn more about our team, please get in touch!