Publications

Under the American Inventors Protection Act (AIPA) of 1999 and the recently adopted publication rules, all nonprovisional utility patent applications filed on or after November 29, 2000 are published automatically 18 months after the earliest claimed filing date. For many years, PCT procedure has required that all patent applications be published 18 months from the earliest effective filing date. Accordingly, these publication rules are one step towards bringing United States patent procedure into conformity with PCT practice.

Publication of a patent application carries a $300 fee that is generally due with the payment of the issue fee. However, if the applicant wishes to have its application published early or republished (discussed below), the $300 publication fee plus a $130 petition fee is due with the request for early publication.

Publication of a patent application serves as a 102 prior art bar to those also wishing to patent the subject matter. Accordingly, early or voluntary publication may create a beneficial statutory bar to prevent competitors from later attempting to patent the subject matter. Further, the publication of the patent application initiates the period under which an applicant is entitled to so-called “provisional rights” under which the applicant is entitled to royalties under certain circumstances. Accordingly, it may be desirable to request early publication or voluntary publication of a patent application that would not be subject to the publication provisions because it was filed before November 29, 2000.

Patent applications for which early or voluntary publication is requested are normally published approximately 4 months after the request. The USPTO will not consider requests for publication on a specific date. Such requests will be treated as a request for publication as soon as possible.

Under certain circumstances, an applicant may wish to have its patent application republished in order to correct errors in the originally published application or due to amendments made during prosecution. To correct or revise errors, the applicant must pay a publication fee ($300) and a processing fee ($130). No fees are due for a republication that is required to correct material errors made by the USPTO, if the request is filed within 2 months from the publication date of the patent application.

Avoiding Publication

However, the publication of a patent application is not always beneficial as it provides the competition with information on product strategy that may be better off kept secret until the patent issues. Further, if the patent applicant is not successful in obtaining a patent on the subject matter, the publication has the undesirable affect of serving as a public disclosure of information that may otherwise be treated as confidential.

If the applicant does not intend to file a foreign patent application on the application’s subject matter, the applicant may avoid publication by filing a “Nonpublication Request.” The request must certify that the invention disclosed in the U.S. application has not been and will not be the subject of a foreign or international application subject to publication provisions. Under these circumstances, the filing of a PCT counterpart application precludes the ability to use a nonpublication request.

While the nonpublication request must be filed with the patent application, there are two less desirable scenarios in which publication may be avoided if the request was not filed with the application.

Under the first scenario, the applicant may file a petition to convert a nonprovisional application into a provisional application. Thereafter, the applicant may file a second nonprovisional application claiming the benefit of the prior provisional application together with a nonpublication request. This option is useful provided that the original nonprovisional patent application does not claim priority from an earlier filed provisional patent application.

Alternatively, publication may be avoided by expressly abandoning the patent application more than 4 weeks from the projected publication date. In order to preserve its patent rights, the applicant must file a new application, prior to the express abandonment, claiming priority to the abandoned application together with a nonpublication request. When using this option, additional filing fees are incurred, but the original filing date is maintained.

Rescinding Nonpublication Requests

If a nonpublication request is filed at the time of filing the U.S. application but it is later determined to have been erroneous, the request must be rescinded. If a foreign or international application is filed, the applicant must rescind the nonpublication request within forty-five (45) days after the foreign or international patent filing. Failure to notify the USPTO of such foreign or international filing will result in the abandonment of the US patent application.

Further Information

Additional information may be found at www.uspto.gov.

This document is intended as an informational reminder and does not constitute legal advice for any specific factual situation. If you would like more information or would like to discuss a particular situation, contact a member of Wiggin & Dana’s Patent Practice Group .