Non Publication Requests
A nonpublication request is a request by the patent applicant to not publish a nonprovisional patent application. By default, every nonprovisional patent application is published 18 months after the filing date of the patent application. The nonpublication request prevents the publication.
Benefit of publication
The benefit of publication is that the patentee may seek past damages for infringement that occurred prior to the issuance of the patent and after the publication of the patent application. The caveat is that the claims in the published patent application must survive examination substantially unchanged and mature into a patent. Some patent applications do pass through examination without amendment. However, most claims are amended during prosecution. As such, most patentees would not be able to take advantage of this rule.
Provisional patent application
A provisional patent application is not published unless a corresponding follow-on non-provisional patent application is filed claiming priority back to the provisional patent application. If so, the 18-month time period is calculated from the filing date of the provisional patent application.
Design v. utility patent applications
Design patent applications are never published until they mature into a patent. The above guidelines are applied only to utility patent applications.
Request for early publication
A request for early publication may also be filed with or anytime after filing of the nonprovisional patent application to take advantage of the provisional damages discussed above.
The downside to filing the nonpublication request
The downside to filing the nonpublication request is that you must have the intent not to seek patent protection in foreign countries. If you are unsure whether you want to file for foreign patent protection, you cannot file the non-publication request. If you do file the non-publication request, can you change your mind later? See the answer below.
Upside to filing the nonpublication request
The upside to filing the nonpublication request is that others cannot review your patent application or the prosecution file history until and if a patent matures from the patent application. Products can be marketed as patent pending for as long as the patent application remains pending. Competitors cannot review the status of the examination of your patent application. This is extremely useful especially if the prosecution of the patent application is not proceeding favorably for you.
Changing your mind
If you change your mind in the future, rescission of the nonpublication request may be made. Please keep in mind that during litigation, opposing counsel will explore this issue to determine whether you ever had the intent to seek foreign patent protection but merely filed the nonpublication request to keep your options open. This could affect the cost of future litigation and the validity of your patent application.
Timing for filing the nonpublication request
The non publication request, if filed, must be filed with the filing of the patent application. If the nonpublication request is not filed with the patent application, then the patent application will publish in due course. If you wish to maintain the secrecy of your patent application until it matures into a patent, the only other option is to abandon the first original patent application and refile provided that this is still an option. Another downside for abandoning and refiling is that intervening prior art could be cited against your patent application during examination.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.