What is a pre-grant publication?

A pre-grant publication refers to the publication of a nonprovisional utility patent application before it grants as a patent.  You can file a request for nonpublication to bypass this rule but you need to intend to forego foreign patent protection.  Also, you can file a request for early publication to accrue damages from patent-pending infringement.  Also, you can file a request for republication if the text in the pre-grant publication was incorrect or if the application and claims were amended after the pre-grant publication.

We will discuss the following terms in-depth:

1. Pre-grant publication
2. Request for nonpublication
3. Request for early publication
4. Patent-pending infringement
5. Request for republication

What is a pre-grant publication of your patent application?

The pre-grant publication refers to the publication of your patent application before it is granted as a patent.  The pre-grant publication does not mean that you have received a patent on your invention.

The publication occurs about 18 months after the earliest priority date.   For example, if you filed a provisional patent application on January 1 and a corresponding nonprovisional patent application, the nonprovisional patent application will be published as a pre-grant publication in June of the following year.

Here’s another example.  if you filed a continuation patent application more than 18 months from the filing date of the base nonprovisional patent application, the patent office will publish your continuation patent application as soon as it can after the filing of the continuation patent application.

All nonprovisional utility patent applications are published before they are granted unless you file a nonpublication request.

What is a request for nonpublication of your patent application?

You can opt-out of the pre-grant publication to prevent the publication of your patent application before it is granted as a patent.  You need to file a request for nonpublication to the USPTO. By doing so, you can keep the contents of the patent application secret for as long as you want until the patent is granted.

To file the request for nonpublication, you need to certify that a patent application has not and will not be filed in a foreign country.  Essentially, you are certifying that you have no intent to file a patent application in a foreign country.  You can later file a request to rescind the nonpublication request if you change your mind.

However, the rescission may become a point of contention during litigation.  The infringer will argue that you lied to the patent office about your intent not to file any foreign patent application.

What is a request for early publication of your patent application?

A request for early publication is a request to publish your patent application before 18 months normal time frame to publish the pre-grant publication.  You may want to request early publication if you want to capture damages for patent pending infringement (discussed below).

For example, you just discovered that someone copied your invention.  You want that person or entity to incur max pain after your patent is granted.  To impose max pain, you would try to set yourself up to seek damages for patent pending infringement.

What is a request for republication of your patent application?

A request for republication is a request to publish the pre-grant publication another time.  You may want to file a request for republication if there is an error in the text of the patent application or if you changed the claims to seek damages for patent pending infringement.

What is patent pending infringement?

Patent pending infringement is an infringement that occurs based on the claims in your pre-grant publication.  You can’t seek damages while your patent application hasn’t matured into a patent.  You can only do so after the patent has been granted.

For example, let’s assume that your pre-grant publication has already been published.  You discover an infringer and that company is taking away market share.  However, your patent application hasn’t matured into a patent yet.  To impose max pain on the infringer, the claims of your application can be amended to cover the product of the competitor.  If a patent grants on the claims in the pre-grant publication, you can seek damages prior to the date of the patent grant.