Maiorana, P.C.

Should I Allow My Patent Application To Publish?

There are advantages and disadvantages to whether or not you allow your patent application to publish. A patent publication is a document that looks similar to an issued patent, but is not an enforceable patent right. All of the information from your patent application is included (e.g., specification, drawings, claims, etc.). The patent publication occurs 18 months after the filing of a patent application, unless the applicant either requests early publication, or requests that the application does not get published.

A Track 1 Application is required to be published. An application that will be filed in another country claiming priority to a U.S is also required to be published.

The 18 month publication system was originally developed as part of the GATT Treaty. The details are complicated, but from what I read at the time, the Japanese wanted the U.S. applications to publish at 18 months. The U.S. conceded this in exchange for allowing the U.S. to file a Japanese counterpart application in English, then prepare a translation to Japanese within a set time. From a practical standpoint, this did take a lot of pressure away when filing a counterpart application in Japan. Routine questions can be exchanged between our offices and the Japanese associates on a normal time line basis, rather than at a rush basis to meet an arbitrary time frame. The Japanese concern was the numerous U.S. “submarine” patents. This was a procedure used by patent trolls to have a secret patent filed at the U.S. Patent Office that remained pending for years. Then the “submarine” would surface to try to enforce against a particular target.

If a patent application publishes, it is possible to get pre-issuance damages back to the publication date. To get pre-issuance damages, the potentially infringing party must have actual knowledge of the publication, and the claims must be in “substantially identical” condition to the published claims. While these two criteria are often not met, there are cases that do meet these criteria. The patent publication could then prove valuable in a litigation scenario.

Another advantage of an 18 month publication would be that the publication would be used as prior art against a competitors later filed application. This could potentially make it more difficult, or impossible, for a competitor to get patents in the same field. This might minimize conflicts with a competitor.

The advantage to choosing to "not publish", would be that competitors would not know about the subject matter at all - at least until a patent issues. This could be an important aspect in a fast moving market where a competitor could potentially search the patent publication database for useful facts to use in an infringing situation. Prior to the various modern revisions of the U.S patent statutes, patent applications would remain in secret until they issued. One original intent with granting an inventor a limited monopoly for his inventions was to encourage inventors to write down how to make and use their inventions. Back in the day, inventors would simply not write down their secrets, and the technology would be lost.

By allowing a patent application to publish at 18 months, there is a risk that the claims may never be in condition to issue as a patent, but the secrets of the invention would be made public.

Both choices have pluses and minuses. In general, a dialog with one of our patent attorneys can help resolve these issues in a way that maximizes the benefits, and minimizes the drawbacks.