1. To Publish or Not to Publish
2. Nonpublication Requests

A publication of patent application makes the entire file history of a patent application public and available for online viewing or downloading through public PAIR. This means that any third party can view your patent application, as well as all of the Office Actions of the U.S. Patent Office, including a patent rejection and any Responses and Amendment processed by the U.S. Patent Office.

In addition, later patent applicants — either yourself or others — can file a patent application based on this previously published patent application.

To Publish or Not to Publish

There are several reasons why you might want to publish your patent application:

  • U.S. Law Requirement: If you have filed (or intend to file) in a foreign country or intend to submit an international patent application, U.S. law requires your patent application to be published. For example, if you have filed a Patent Cooperation Treaty (PCT) international patent application 30 days before your U.S. patent application, the U.S. patent application will need to be published within 18 months of the soonest valid priority date.
  • Provisional Rights: Once the patent is granted, you may be liable to receive a royalty for infringing activity that occurs from the date of the patent application publication to the issue date of the patent.
  • Competition: Upon publication of patent application, competitors may take notice that you are developing specific technology.
  • Patent Searches: Once published, your patent application will appear in patent searches by competing companies, USPTO examiners, and other entities aiming to patent similar technologies.
  • Prior Art: Regardless of whether your patent application is granted or later abandoned, the U.S. Patent Office may use your published application to reject third-party applications for similar technology.
  • Recognition: Even if a patent is not granted, you may want to claim recognition for your work through the full disclosure of a published patent application.

In general, those who eventually wish to license their patent rights usually want the patent application to remain confidential, unless they plan to file internationally.

In addition to why you may want your patent application published, there are also numerous reasons why you might prefer to keep it unpublished:

  • Invention Confidentiality: By withholding the publication of patent application, the invention will remain confidential at least until a patent may be granted.
  • Patent Document Confidentiality: All documents related to communication between you and the U.S. Patent Office will remain confidential at least until a patent may be granted.
  • Trade Secrets Confidentiality: Any trade secrets included in the patent application will remain protected as long as the patent application remains unpublished.
  • Application Status Confidentiality: Third parties will not be able to determine the status of patent application as long as it remains unpublished.
  • No Prior Art: If the patent application is abandoned and is not published, it cannot be used by the U.S. Patent Office as Prior Art in the instance of rejection of a patent application filed later by you for a similar invention.
  • Ability to Rescind Later: If you change your mind, you can always rescind your nonpublication request after the application is filed. On the contrary, you cannot file a request for nonpublication after the patent application is filed.

Nonpublication Requests

To avoid a patent application publication, you must file a Nonpublication Request with your patent application. If you do not include a Nonpublication Request, the U.S. Patent Office will publish your patent application after 18 months from the earliest effective priority date, unless you clearly abandon the application before its publication.

If you want the U.S. Patent Office to publish your application, but you have already submitted your application, don't worry! You can rescind your Nonpublication Request at any time and for any reason. However, if you want to file a patent application in a foreign country later, you will be required to file a Nonpublication Request within 45 days of the foreign application patent to avoid your patent application's abandonment.

A patent application must be taken seriously, and its case must be considered individually before filing. It is best to consult a patent attorney to discuss your objectives and needs regarding your invention and its patent application.

If you need help with your patent application, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.