Back to: Navigating the Patent System
Can my competitors see the content of my patent application? Is there any way to keep them in the dark about its contents and its progress in the patent prosecution process?
Yes, and yes (if you don’t file for a patent in foreign countries)!
Startups and solo inventors often ask whether others can see the content of their patent application. When patent applications are filed, they are kept secret initially, but will eventually become published prior to the issuance of the patent. The information in the patent application will therefore eventually be accessible to others. Inventors are often concerned about keeping their inventions secret prior to the filing of the patent application. After the filing, the invention has “patent pending” status. It is therefore safe to disclose the invention or the patent pending product through marketing efforts after filing the patent application because anyone that seeks a patent based on your marketing efforts would have filed their patent application after yours.
However, there are instances in which it is advantageous to prevent competitors from learning about the information included in the patent application. For example, the patent application may contain additional information over and above the basic invention such as alternative embodiments, the minimally viable product, and other details regarding the point of novelty. In some cases, it is in the inventor’s best interest to keep these secret for as long as possible (i.e., until the patent application matures into a patent). This can be done by making a nonpublication request when filing. This request will ensure the secrecy of the contents of the patent application until (or if) the patent is granted.57 However, for a patent applicant to file a nonpublication request, the inventor must be able to declare that he or she has no intent to file a patent application in foreign countries.58
What is the relationship between a nonpublication request and preserving the ability to file for patent protection in foreign countries?
If you file a nonpublication request, you cannot file for patent protection in foreign countries
Requests for nonpublication and preservation of the ability to file in foreign countries are interrelated. If an applicant intends to file patent applications in foreign countries, filing a request for nonpublication is not possible. Conversely, if the applicant does not intend to file patent applications in foreign countries, the applicant can file a request for nonpublication. The request for nonpublication is a box that can be checked on the Application Data Sheet, which is filed with the patent application. If the applicant later decides to file a patent application in any foreign country, the patent applicant may file a revocation of the request for nonpublication within forty-five days of filing the patent application in another country or filing a PCT application.
57. The nonpublication request was created when the United States began publishing all patent applications eighteen months after the earliest priority date, that is, the filing date of the first filed application to which the instant application claims priority. For example, if a provisional application is filed and a subsequent nonprovisional application is filed one year later, the scheduled publication of the nonprovisional patent application will be eighteen months from the filing date of the provisional application or six months after the filing of the nonprovisional application. The purpose was to move towards uniformity with patent laws of foreign countries and accordance with the American Inventors Protection Act. Most foreign, patent offices require that patent applications be published eighteen months after filing without an option to request nonpublication. Since the eighteen-month, pre-grant publication regime was an effort to harmonize U.S. patent laws with the patent laws in foreign countries, the United States created the non-publication request as a way for applicants who do not want to file in foreign countries to opt out of the eighteen-month, pre-grant publication requirement
58. See Chapter 6 for more information on filing a patent application in foreign countries