US Patent Applications – To Publish or Not?
by Michael Antone, Counsel
Before the American Inventors Protection Act (AIPA) of 1999, US patent applications were not published unless and until the USPTO issued a patent on the application or the applicant requested publication. What this meant for inventors and applicants was that their inventions disclosed in the patent application remained a trade secret if the application was rejected by the USPTO.
The publication of US patent applications was part of the harmonization of global patent law. Perhaps recognizing the value of non-publication and/or as a compromise to get the legislation passed, or for another reason, the AIPA retained the ability of a US patent applicant to not have their US patent application published, if the applicant is only filing in the patent application in the US.
Many inventors and patent applicants are interested in only filing their patent applications in the US for various reasons, such as the invention has a limited market outside the US, the high cost of filing patent applications internationally, etc. As such, non-publication remains an option for those patent applicants that are only interested in trying to obtain patent protection in the US only.
The question of whether to have a US patent application published before issuance is a business call as it has both advantages and disadvantages.
A few advantages of publication are: 1) you have provisional patent rights and may be entitled to reasonable royalty damages starting from the publication date, but only if the issued patent is substantially identical to the published application, and the infringer had actual notice of the published application, 2) the publication could discourage potential competitors from competition or generate interest from partners, investors, etc. if they think you may be awarded a patent, and 3) the publication becomes prior art against later filed applications by competitors.
For inventions that may be maintained as a trade secret, the biggest disadvantage is probably the loss of trade secret protection, which publication extinguishes. Relatedly, competitors can review the published application before issuance and can work around the claimed invention and/or begin using the invention if they think the application will be rejected or patent can be invalidated.
Companies considering their patent filing options will want to consider the relative benefits of publication versus non-publication for their particular inventions. If you have questions about non-publication and your inventions and would like to discuss them, please contact us.
