How to Expressly Abandon a Patent Application to Avoid Publication?

A patent application can be expressly abandoned to avoid publication of the information in the patent application as a pre-grant publication. The purpose of doing so is to keep the information contained in the patent application as a trade secret and not dedicate the invention to the public.  Don’t confuse abandonment of the patent application with abandonment of the invention. This article explains why you might choose to expressly abandon a patent application, its implications, and how to complete the process.

What Happens When a Patent Application Is Published?

Patent applications are typically published 18 months after their filing date or from the earliest claimed priority date. Once published:

• The contents of the application become public and cannot be removed from USPTO records.
• The disclosed information includes:
  • Names of the inventors.
  • Details of the invention, including all its technical aspects.

Anyone can access the application, publicly exposing any information about your invention in the application.

After one year, the information in the patent application is dedicated to the public unless you maintain patent pendency of the patent application.

Why Avoid Publication?

1. Preserve Trade Secrets

If your application contains trade secrets not yet disclosed through marketing or product launches, express abandonment allows you to prevent the publication of the patent application as a pre-grant publication.  By doing so, you maintain the trade secret status of such undisclosed information.

2. Maintain Confidentiality

Some inventors prefer to keep their inventive activities private. For instance, an inventor working independently while employed at a company may risk repercussions if their employer discovers the invention. Express abandonment ensures the invention is not disclosed to the public.

Be Aware: Loss of Priority Date versus Dedication to the Public of the Invention

When the application was filed, the filing date established a priority date.  Abandoning a patent application results in the loss of the priority date but is not the same thing as dedicating the invention to the public. This is significant because:

• The priority date establishes your rights against others who may file similar inventions after your filing date.  The U.S. is a first to file system.  As such, it’s important to establish the earliest priority date so that you can win the race to the patent office.
• If the application is abandoned and you’ve already marketed your idea more than a year ago, you’ve dedicated your invention to the public.  Competitors can use your marketing information or file their own applications for similar ideas.

How to Maintain Priority and Not Abandon the Invention?

If you don’t want to dedicate your invention to the public yet keep the information private, you can file a continuing application (e.g., a continuation, divisional, or continuation-in-part) with a nonpublication request before abandoning the original application. This strategy ensures:

• The information in the original application remains unpublished.
• The priority date of the original filing is preserved and your invention remains patent pending despite any public disclosure you’ve already done.

Important Tip: File the continuing application on the same day as the express abandonment petition.  This ensures that you don’t forget to file the continuing application and cause a lapse in protection.

Abandoning the Application vs. Abandoning the Invention

Express abandonment only stops the application process and does not dedicate it to the public (i.e., abandon the invention). However:

• If no continuing application is filed and the patent pendency ends, you are effectively dedicating the invention to the public to the extent that you’ve already publicly disclosed the invention.
• Any public disclosures of the invention (e.g., through marketing, product launches, or demonstrations) become prior art to you after one year, limiting your ability to patent the invention later.
• Key Deadline: U.S. law requires that inventors file a patent application within one year of the first public disclosure. If this window has passed, the invention to the extent that it has been marketed is dedicated to the public.

What Can You Do If Your Application Has Already Published?

If your application has already published as a pre-grant publication, it’s too late to do anything to remove it from the public record. You cannot expunge the published information, and it will remain publicly accessible through the USPTO and other databases. You can still expressly abandon your patent application but usually there isn’t a good reason to do so.  In these cases, we tend to let the patent application expire in due course (i.e., let it expire naturally for failure to respond to an office action).  By doing so, you give yourself the most amount of time in case you change your mind in the future.

When do you have to file the Express Abandonment?

You have to file the express abandonment more than four weeks prior to the projected publication date.  The projected publication date can be found at the Patent Center.  If you will be filing the express abandonment, do it early.  There is no guarantee that the USPTO won’t publish your application.

How to File for Express Abandonment to Avoid Publication?

To expressly abandon your patent application, file Form PTO/AIA/24A. Follow these steps:

1. Complete the Basic Information

Provide the following details at the top of the form:

• Application Serial Number (mandatory): This is essential for identifying the correct application. Double-check for accuracy.
• Filing Date: Useful for verification but not required.
• First Named Inventor: Helps the USPTO confirm the application.
• Art Unit and Examiner Name (optional): Adds clarity but is not mandatory.
• Attorney Docket Number (optional): A helpful reference for your records but not required.

Tip 1:  You can find all of this information on the filing receipt.

Tip 2: If the application serial number is incorrect, the USPTO cannot process your abandonment request. The other fields are optional and are used for verification.

2. Pay the Petition Fee

A petition fee is required to process the abandonment. The simplest way to pay is by credit card:

• Use Form PTO-2038 to authorize payment via credit card.
• Submit the payment through the USPTO’s Patent Center, which is faster and more reliable than mailing a check.

3. Address Excess Fee Handling

At the bottom of the form, you can specify how any overpaid fees should be refunded. This section is optional but ensures clarity in case of excess payments.

4. Sign the Petition

The petition must include a valid signature. You can use:

• A handwritten signature, or
• A slash signature (e.g., /John Doe/), which is an accepted electronic signature for USPTO documents.

5. Submit Electronically

Submit the completed form electronically through the USPTO’s Patent Center. This method ensures faster and more secure processing. Avoid mailing hard copies unless absolutely necessary.

Key Takeaways

1. Effect of Express Abandonment: Prevents the application from being published, maintaining confidentiality of the invention.
2. Strategic Reasons: Preserve trade secrets, keep information private, and delay commercialization decisions.
3. Avoid Losing Priority Date: File a continuing application with a nonpublication request before abandoning the original application.
4. Abandonment Implications: If no continuing application is filed and the one-year disclosure deadline has passed, the invention is effectively abandoned and dedicated to the public.

If you have questions about express abandonment, preserving your invention’s confidentiality, or managing your intellectual property strategy, call me at 949-433-0900 or schedule a consultation. Let’s discuss how to protect your innovations and avoid unintended consequences.