• It´s Here: 18-month Publication Requirement
  • May 5, 2003 | Author: Adonis A. Neblett
  • Law Firm: Fredrikson & Byron, P.A. - Minneapolis Office
  • If you file a patent application before the U.S. Patent and Trademark Office (USPTO) on or after November 29, 2000, with few exceptions, your application will automatically be published 18 months from the date your application is filed. This is one of the major changes brought about by the American Inventors Protection Act of 1999 through its Subtitle E, which is also referred to as "The Domestic Publication of Foreign Filed Patent Applications Act of 1999". As you and your counsel develop your patent filing strategy, you will want to understand the essence of the 18-month publication requirement and its advantages and disadvantages.

    Though there are a few exceptions, the Act otherwise provides for the mandatory publication of every U.S. utility patent application filed on or after November 29, 2000. Generally, the entire disclosure will be published. However, if you have filed foreign applications containing less disclosure than your U.S. application, you can submit to the USPTO a redacted version of the U.S. application for publication, excluding information (from publication) not contained in your foreign filed applications.

    Exceptions to the publication requirement are limited. An application will not be published if: (1) it is no longer pending (i.e., abandoned or issued); (2) it is subject to a secrecy order; (3) publication or disclosure would be detrimental to national security; (4) the application is a provisional application (under 35 U.S.C. ยค111(b)) or (5) the application is for a design patent.

    There is a further exception that merits specific note. Your application will not be published if you request at the time of filing and certify that the invention disclosed in your application is not and will not be the subject of a foreign filed application subject to an 18-month publication requirement. In other words, publication is not mandatory for U.S. applicants who do not intend to file corresponding international applications. However, since publication is otherwise automatic, the applicant must submit a timely request or suffer unintended publication.

    There are advantages to publication of your application, and if you have filed an application prior to November 29, 2000, you may request immediate, voluntary publication. Also, rather than wait the full 18 months to realize the advantages, you can request early publication.

    One advantage of publication is the "provisional right" to reasonable royalties from any person who, from the date of publication until the date of patent grant (the pre-grant period), makes, uses, offers for sale, sells or imports into the U.S., the invention as claimed in your published patent application. This right to royalties extends to any person who uses, offers for sale, or sells or imports into the U.S. products made by a process claimed in the published patent application. This right is not available unless the invention as claimed in the patent that issues is substantially identical to the invention as claimed in the published patent application.

    The second advantage of publication is its "prior art" effect. The published application is considered prior art and may thereby obstruct a competitor attempting to secure a patent on a subsequently filed application. Prior to the Act, your invention as disclosed in your application would only have this potentially "patent-defeating" effect in the event that your application actually issued as a patent. Now, your invention as disclosed in your application has prior art effect as of the date of publication, even if it does not eventually issue as a patent.

    What possible disadvantages might there be? When your application is published, your invention is disclosed to the public. Additionally, the Act provides the public, including your competitors, the right to request copies of the prosecution history for your published application. Appreciate that disclosure and prosecution history access cuts both ways, providing access to information about your competitors as well. The ability to track the status of a competitor's patent applications certainly makes intelligence gathering easier.

    These are factors to consider when deciding whether to request early or voluntary publication, particularly for U.S.-only applications. Why? Your patent application may contain what you consider to be a genuine trade secret that you may want to keep from competitors during the pre-grant period, with the possibility of retaining that trade secret if a U.S. patent does not issue. Further, the compensation that may come to you through the right to reasonable royalties may not be adequate compensation for the loss of your competitive advantage between publication and grant of your patent.

    With publication comes a provisional right to reasonable royalties, prior art effect, and a double-edged competitive intelligence tool. The 18-month publication requirement is here. Use it to your strategic advantage.