We’re going to discuss the Nonpublication Request. Without this request, your patent application will be published about 18 months after the earliest priority date. Upon filing the request, the Patent Office will keep your patent application secret until it’s granted as a patent.
We’re going to discuss:
- What is a Nonpublication Request?
- How to fill out the various fields in the nonpublication request?
- When must the nonpublication request be filed?
- How to keep your application secret even if you miss the deadline for filing the nonpublication request?
If you need help with the nonpublication request form and other steps in protecting your invention, you can hire me, Orange County patent attorney James Yang. I work with inventors and attorneys of counsel throughout California. You can schedule a consultation, or read on to find out more about filling out the nonpublication request form properly.
What is a Nonpublication Request?
The nonpublication request is a request by the applicant to keep the patent application being filed a secret until it is granted. Otherwise, your patent application will be published as a pre-grant publication 18 months after the earliest priority date.
The nonpublication request was developed to harmonize the patent system of the United States with the rest of the world. In most parts of the world, a patent application is published after it’s filed. However, a U.S. patent application was never published until it matured into a patent. In order to make the U.S. patent system similar to the rest of the world, the United States decided to publish all patent applications but allowed applicants to request nonpublication of their application if they didn’t want to seek foreign patent protection. It was an opt-out form. If you didn’t want to join the rest of the world, you could opt out of the automatic publication of your patent application but you had to intend not to file any foreign patent application.
How to fill out the various fields in the nonpublication request form?
The first part of the nonpublication request form is the header information.
The header block contains fields for the first named inventor, the title of the invention, and the attorney docket number if any. Because the nonpublication request form must be filed with the filing of the patent application, there is no field for the patent application serial number.
The first named inventor should be the first inventor on the list as indicated on the Application Data Sheet (ADS).
The title of the invention should be the same title as inserted in the title of the patent specification.
By filing the nonpublication request form, the applicant is making two statements.
First, they are stating that they will not seek patent protection for the invention and have not sought patent protection for the invention in other foreign countries.
Moreover, they are requesting that the patent application being filed not be published under the pre-grant publication rules. If you decide not to publish your patent application under the pre-grant publication rules, you are also forgoing any rights to damages based on patent-pending infringement. You can read more about patent pending infringement in my article: Can others copy my invention while the patent application is being examined?
In the signature block, the applicant or their attorney must sign the document.
The signature may be a slash signature (e.g., /[your name]/) or a wet signature. You must also fill in the name of the person signing, the date of signing, and the telephone number of the person signing the document.
There are three different notices in the nonpublication request form.
The first paragraph states that the nonpublication request form must be filed with the filing of the patent application. You cannot file this form after the filing of the patent application if you decide later that you want to prevent publication.
The second paragraph states that you can rescind the nonpublication request after the filing of the patent application. You may want to do this if you want to take advantage of the patent pending infringement provisions. Alternatively, you have to do this if you later change your mind and want to seek patent protection in foreign countries.
The third paragraph states that if you ultimately do file a patent application in other foreign countries, you must notify the United States Patent and Trademark Office of such filing within 45 days. Otherwise, your application will be abandoned automatically by the operation of law. The USPTO won’t send you a notice of abandonment. Rather, when you sue someone for patent infringement, the infringer will argue that your application has been abandoned and your patent is invalid for failure to satisfy this requirement.
When must the nonpublication request be filed?
The nonpublication request form must be filed at the time of filing the nonprovisional patent application.
How to keep your application secret even if you miss the deadline for filing the nonpublication request?
Let’s assume that you filed a patent application already. However, you want to maintain the secrecy of the patent application until the patent is granted and you don’t want to seek any foreign patent protection.
If your patent application has already been published under the pre-grant publication rules, there’s no way to maintain the secrecy of your patent application. It has already been published.
However, if the patent application has not yet been published under the pre-grant publication rules, you can expressly abandon your patent application. By abandoning the patent application, the patent application won’t be published under the pre-grant publication rules.
Now, you still want to keep the patent pendency of your invention and maintain the priority date period to do so. You have to file a continuation application that claims priority to the application that you’re abandoning. However, this time, when you file the continuation application, you must file the nonpublication request. In this manner, you would maintain the secrecy of your patent application until the patent is granted.