People's Law Guide
Publishing of Pending Patent Applications By the
If you are like most inventors, the thought of publicly disclosing the secret details of your invention before a patent has been issued is very unsettling. Few inventors realize, however, that under recent changes to
This is exactly what American inventors face under recent changes in the patent law unless they fit under certain narrow exceptions to publication and take active steps to prevent their pending patent applications from being publicly disclosed.
The Way Things Were
Inventors have long regarded the United States Patent & Trademark Office as a safe haven for the disclosure of confidential and secret information in the course of applying for a patent. Historically, the U.S. Patent Office maintained a patent application in complete secrecy. If a patent issued from an application, the details of the invention were made public in exchange for the exclusive legal monopoly rights afforded by the patent.
If an application did not eventually issue into a patent, the inventor’s confidential information was never disclosed. In either case, the decision to keep details of an invention confidential was completely in the hands of the inventor. For over two hundred years, these features of the
The American Inventors Protection Act of 1999 became law on November 29, 2000, and dramatically changed the
According to the new rules of practice in patent cases, utility patent applications filed after November 29, 2000, will be published promptly after the expiration of 18 months from the earliest claimed filing date. Under the new rules, any information contained in a pending patent application will be accessible 18 months from its filing date. If the application is claiming the benefit of the filing date of an earlier filed application, the application will be published 18 months from the date of the earlier filing date.
Purposes of Publication
What purpose would publication serve? Firstly, by publishing pending applications, the submarine patent phenomenon is averted. A “submarine patent” generally refers to a patent issued long after the filing date of an application, and to the surprise of industry players who had no idea that patent protection had been sought.
The classic and well-documented examples of submarine patenting were the “machine vision” patents granted in the early 1990’s to Jerome Lemelson based on patent applications he filed forty years ago. Publishing pending applications after 18 months eliminates a patent from being secretly prosecuted for a long period without detection by industry.
The second reason for publishing patent applications is to bring
Finally, permitting the public to see details of a patent application before it issues, encourages competitors to submit prior art references to an examiner in an effort to defeat pending applications.
Exceptions to Publication
Now that we have looked at the procedures and purposes of publishing, let us turn to the notable exceptions to the 18-month publication requirement. Firstly, it should be remembered that the 18-month publication rules only apply to utility patent applications. Design patents and provisional patent applications are not subject to publication. The filing of a provisional application, however, will start the clock on the 18-month period if the benefit of the filing date is later claimed in a non-provisional patent application.
Additionally, publication is not mandatory where an inventor certifies that he has not filed for a patent abroad and does not intend to do so. Finally,
Avoiding Publication Possible if Only Filing in the
It is important to note that the early publication requirements do not apply if an applicant seeks patent protection only within the
Benefits of Publication
There are a variety of new opportunities and substantial risks created by the 18-month publication system in the
One advantage of publication is that the applicant becomes entitled to provisional rights effective in the period between publication and the grant of a patent. If a patent eventually issues from an application, for example, the applicant can be entitled to royalty payments from the date of publication if his patent rights are violated. Another advantage of publication is that publication of a patent application triggers a prior art date that may be used to prevent others from obtaining patent rights on your invention.
For a nominal fee, an inventor can choose to have their patent application published before the standard 18-month publication period.
Decisions, Decisions, and More Decisions
The publication of
If they decide not to file outside the
These decisions should be made very carefully after considering the benefits and disadvantages that publication offers in your particular circumstances. It is always advisable to consult with a Registered Patent Attorney before deciding on a course of action.
John Rizvi is a Registered Florida Patent Attorney at the