TAKEAWAY: Patent applicants should keep in mind the early publication and non-publication options available for departing from the USPTO’s usual practice of publishing patent applications within 18 months of their earliest priority dates.
The USPTO currently publishes patent applications 18 months from the earliest date to which priority is claimed. Publication of applications involves several benefits, including creating prior art, and putting competitors and the public on notice of an applicant’s inventive activity. In some cases, a published application can enable applicants to obtain reasonable royalties from others who make, use, or sell the invention between when the application is published and when the patent is granted, subject to strict criteria. Given these benefits, applicants should keep in mind the little-known provision that the USPTO will publish applications early, at applicants’ request, for any applications that are complete (e.g., an executed oath or declaration has been filed and the filing fee has been paid). Such early publication generally takes about 14 weeks for the USPTO to process, which if requested upon filing or soon after filing, can be a significant acceleration as compared to the usual 18 months.
On the other hand, in some cases, applicants may wish to delay the usual 18 month publications, or avoid it altogether until issuance. Delaying publication until later in prosecution or issuance can enable applicants to avoid disclosing their inventions to the world until they are assured of certain events, such as the receipt of favorable search results, allowable claim scope, or even external (e.g., market) events.
The regular schedule of publication can be delayed or avoided only if a nonpublication request is filed at the time of filing an application, and if the applicant attests that the same invention has not been and will not be pursued in a foreign country or other venue that requires 18-month publication. Failure to file a nonpublication request with an application can be corrected only by abandoning the application in favor of a continuation application filed with a nonpublication request, or by converting the application into a provisional application (subject to certain caveats). If an applicant files a nonpublication request but later files a foreign patent application, the U.S. application is considered abandoned unless rescission of nonpublication is filed within 45 days of the foreign filing. This abandonment is especially problematic because it can happen automatically and go unnoticed.