You don’t always have to choose between patenting your invention and keeping it as a trade secret. By filing your U.S. patent application with a nonpublication request under 35 U.S.C. § 122(b)(2)(B)(i), you can keep the invention out of the public record while you decide which form of protection serves your business best. Most patent attorneys frame this as either/or. In my experience, that is rarely the right framing for an early-stage inventor.
What’s the False Choice Most Patent Attorneys Give You?
The conventional advice says you must pick one path or the other before you file. Patents protect the invention for a limited time in exchange for full public disclosure. Trade secrets protect the invention indefinitely, but only as long as the information stays secret. Once you file a patent application, the standard story goes, the secret is gone — so you have to commit upfront.
That story is technically correct, but it skips over the most useful tool you have. The 18-month publication rule that forces the choice has a specific exception that most early-stage inventors do not know exists, and that exception is exactly where this hybrid strategy lives.
Why Does the 18-Month Publication Rule Force the Choice?
By default, the USPTO publishes every utility patent application 18 months after the earliest priority date claimed in the application. That is the rule under 35 U.S.C. § 122(b)(1)(A). Once your application is published, anyone can read your full specification, your drawings, and your claims — so any chance of trade secret protection on the disclosed material is gone.
This is why most attorneys treat the decision as binary. If you are going to end up disclosing the invention to the world at the 18-month mark anyway, the trade secret option looks pointless. But you can opt out of publication entirely if you meet one condition.
How Does a Nonpublication Request Keep Your Application Secret?
A nonpublication request, filed at the time you submit the application, prevents the USPTO from publishing it at all. Under 35 U.S.C. § 122(b)(2)(B)(i), the application stays confidential through the entire examination process. It only becomes public if and when the patent issues.
Until that day, the contents of the application remain a trade secret as far as the public is concerned. The USPTO knows about your invention, but the USPTO is statutorily required to keep applications in confidence. Competitors, customers, and the general public see nothing. For a step-by-step walkthrough, see my guide on how to fill out a nonpublication request form.
This buys you something valuable: time. While the application sits in examination, you are simultaneously running both protection tracks at once. You are building a patent record at the USPTO. You are also keeping the invention out of public view, which preserves your trade secret rights so long as you treat the information as confidential within your own company.
What Are the Trade-Offs You Need to Accept?
The big one is foreign patent rights. To file a nonpublication request, you must certify that the invention has not been and will not be the subject of an application filed in any country (or under any multilateral agreement) that requires publication of applications 18 months after filing. In plain English, you are giving up the ability to seek patent protection outside the United States.
For most of my clients, this turns out not to be a real cost. The United States is the largest single market in the world, it is the market where they actually do business, and it is the legal system they understand. Foreign patent prosecution is expensive, slow, and routinely costs more in translations and local counsel than the patent itself. If you were never seriously planning to file abroad, the nonpublication request takes nothing away from you.
If foreign filing might matter later, the certification is reversible. You can rescind the nonpublication request at any time. But there is a strict notice rule: if you do file abroad, you must notify the USPTO within 45 days, or your application will be regarded as abandoned. This is a real trap, so calendar it the day you file overseas.
How Long Can You Realistically Keep the Application Pending?
You can sit in examination quietly for roughly two to three years before things start to get risky. After that point, you run into problems with prosecution laches and possible unenforceability for unreasonable delay.
This is the same doctrine that killed off the old submarine patents — patents that hid in the USPTO for decades and then surfaced to demand royalties on technology the rest of the world had already commercialized. The Federal Circuit confirmed in cases like Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation (Fed. Cir. 2002) and Hyatt v. Hirshfeld (Fed. Cir. 2021) that an unreasonable and unexplained delay in prosecuting an application can render the eventual patent unenforceable. The two-to-three-year window is a practical estimate, not a bright line, but it is a useful planning horizon.
Within that window, the hybrid strategy works cleanly. Past it, you need to either let the patent issue (which makes the disclosure public anyway) or expressly abandon the application and rely fully on trade secret protection going forward.
What If Your Invention Is Reverse-Engineerable?
This is where most founders get the strategy wrong. A trade secret is only a trade secret if no one outside your company can figure out how the invention works. If your product hits the market and a competent engineer can buy a unit, take it apart, and replicate the function, you do not have a trade secret. You have a published invention with no protection.
Before you commit to the hybrid path, decide honestly whether your invention can be reverse-engineered or independently developed by someone working on the same problem. Manufacturing processes you can hide on a closed factory floor are good trade secret candidates. Algorithms running on a server you control are good candidates. Consumer hardware that ships in a box almost never is. I have written separately on why an invention that can’t be reverse-engineered is best protected as a trade secret and on protecting your product from reverse engineering — both are worth reading before you decide.
If reverse engineering is realistic for your product, the nonpublication request still has value, but the strategic role changes. Instead of preserving optionality between two protections, it buys you private prosecution time before the patent disclosure becomes public. That is still useful. It just means you are committed to the patent track from the start.
When Should You File the Nonpublication Request?
The request must be filed at the same time as the application — you cannot add it later. Once the 18-month clock has been ticking, you have lost the option for that filing. This is a one-time decision that has to be made at the front end, which is a major reason I bring it up before any nonprovisional application goes out the door.
Note that nonpublication requests do not apply to provisional applications, which are not published in the first place, or to design applications, which the USPTO does not publish. The request matters specifically for nonprovisional utility applications, where the 18-month publication rule would otherwise kick in.
The Bottom Line
For a U.S.-focused inventor whose invention may or may not survive as a long-term trade secret, the nonpublication request is the closest thing to having your cake and eating it too. You file the patent application, you preserve the trade secret during prosecution, and you give yourself two to three years to see how the market and the technology actually develop before you commit to one form of protection. Skipping this step because an attorney told you the choice is binary is leaving real optionality on the table.
Frequently Asked Questions
Can I file a nonpublication request after the application is already filed?
No. The nonpublication request must be submitted at the same time as the application itself. If you miss the filing window, the USPTO will publish the application 18 months after the earliest priority date and you cannot undo it. This is one of the few patent-prosecution decisions that is truly one-shot.
What happens if I file abroad after submitting a nonpublication request?
You must notify the USPTO of the foreign filing within 45 days. If you miss the 45-day deadline, the application will be regarded as abandoned under 35 U.S.C. § 122(b)(2)(B)(iii). Calendar this deadline carefully — losing an application this way is unforced and avoidable.
Does a nonpublication request affect my patent term?
No. The 20-year patent term still runs from the earliest non-provisional U.S. filing date regardless of whether the application is published. The nonpublication request affects what the public sees during examination, not the term you get if and when the patent issues.
Can I rescind a nonpublication request later?
Yes. You can rescind the nonpublication request at any time, and the application will then be published according to the normal 18-month schedule. This is the right move if your business plans change and foreign protection becomes important. See my walkthrough on filling out the rescission form.
Does keeping the application unpublished hurt my ability to enforce the patent later?
It does not hurt enforcement once the patent issues, but it does eliminate one specific remedy: the right to provisional damages for infringement that occurred between publication and issuance. Provisional damages require a published application, so a nonpublished application gives that up. For most early-stage clients, this is a small price for the trade secret optionality.
If you are weighing whether to file your patent application as a nonpublished case — or whether the hybrid patent and trade secret strategy fits your specific invention — please give me a call at (949) 433-0900 or schedule a consultation online. I am happy to walk through whether your invention is reverse-engineerable, whether foreign rights matter, and how the nonpublication strategy would play out for your matter specifically.
Last Updated: May 2026