The following article appears in the journal JOM, 53 (9) (2001), p. 64. JOM is a publication of The Minerals, Metals & Materials Society

Can Publishing Your U.S. Patent Application Reveal Confidential Information?

By statutory change, the law of the United States now requires publication of pending patent applications. The United States Patent and Trademark Office (USPTO) characterized the change as “…one of the most fundamentally significant changes to the U.S. patent system” in the last century. Previously, pending applications were maintained in confidence by the USPTO. Under the revised law, subject to certain exceptions, all U.S. patent applications filed on or after 29 November 2000 will be published 18 months after the earliest filing date for which the benefit is being sought. The earliest filing date may be the actual filing date of the application in question, or a filing date of an earlier related U.S. or foreign application.

For maximum benefit from the new system an applicant must be aware of the law change and its options. One obvious potential disadvantage is that members of the public will gain access to the information contained in a patent application at an early date and, generally, prior to the applicant being certain that a patent will issue in the United States. A potential benefit is that, in some instances, the patent publication will become prior art as of the publication date and, in certain other instances, as of the filing date of the application.

To avoid publication, one may, at the time of filing the application, file an appropriate statement requesting that the application not be published, and representing
that the application will not be filed in a foreign country that provides for 18-month publication. The general foundation for this change is to bring the United States law in line with the laws of most foreign countries. One major pitfall is that if a notice requesting that the application not be published is filed and the application is filed subsequently in another country, directly or through an international treaty organization, and that foreign application will be subject to an 18-month publication, the applicant must notify the USPTO within 45 days of such filing. Such notice would then assign the application to-be-published status in the United States. Failure to provide this notice within 45 days, whether intentional or inadvertent, will result in a severe penalty: The U. S. patent application will be abandoned.

A degree of protection is provided to applicants whose applications are published. If a patent ultimately issues with claims “substantially identical to the claims in the published application,” and the patentee has given actual notice of publication to an alleged infringer, the patentee may collect a reasonable royalty for the period beginning with the date of publication of the application and ending with the date of the patent grant. As a result, public disclosure through publication does not necessarily leave the applicant totally without remedies.

For applications filed before 29 November 2000, an applicant may request publication within 18 months after the filing date. An applicant may also request that an application be published earlier than the normal 18 months after the earliest filing date for which the benefit is sought. Also, an applicant who has filed a request that the application not be published may rescind this request and permit the application to be published.

If a redacted version of the application is subsequently filed in a foreign country, the applicant may submit the redacted version to the USPTO. In such a case, the U.S.-published application will contain only the non-redacted material. Also, if the U. S. patent application is amended, the applicant may submit a revised copy to the USPTO for publication. If no such submission is made, the original application as filed will be published.

There are a number of exceptions to the publication requirements. First, provisional applications, reissue applications, and design applications are not subject to publication. Also, abandoned applications are not published. The U.S. government may impose a secrecy order on an application in situations for national security reasons, prohibiting publication of such applications. The USPTO will also not publish an application that would violate federal or state law, or if it contains offensive or disparaging material.

While the USPTO will not permit direct physical access to pending published applications, it will, for a fee, provide a copy of the application and any other contents of the “file wrapper” (i.e., the USPTO file on the particular application). Access to the publications is also available through the Internet at www.uspto.gov.

The statute allows third parties to, within two months of publication of the application, submit to the USPTO prior patents and publications deemed to be relevant to patentability. Such submissions must be made without comments or analysis regarding the relevance.

An applicant must follow a number of specific procedures to comply with the new system requirements and to reap its benefits. While those specific requirements are beyond the scope of the present article and available from an intellectual property attorney, it is important that inventors and assignees of their inventions be aware that early decisions need to be made regarding applications to be filed so that they can be assured of obtaining publication or avoidance of publication, as they elect, without running the risk of forfeiture of the U.S. application. Also, the benefits of giving notice to potential infringers after publication may be sought. By being fully aware of the options available and the related actions that need to be taken to pursue a preferred course of action, one can maximize benefits available through the publication system, while minimizing detriments.

Arnold B. Silverman is chair of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail abs@escm.com.