This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
All U.S. applications filed after November 29, 2000, are published at eighteen (18) months from the filing date (or priority date if earlier). One benefit of the publication rule is that the applicant has “provisional rights” with regard to the published claims. This means that if the claims which eventually issue in the patent are “substantially identical” to those published, then additional damages may possibly be obtained against certain types of infringers for the time period between publication and issuance.
The main reason for not wanting to publish the application is that the invention will be disclosed and so cannot be maintained as a trade secret.
After publication, the entire contents of the application, other papers and responses filed by the Applicant, and Office Actions by the Examiner, are made available to third parties. Also, third parties can then submit patents and other materials which they believe are relevant to the patentability of the application. While this latter issue sounds ominous, in fact it may be beneficial to the applicant since any resulting patent will be stronger having been issued over additional closely related patents and materials.
For unpublished applications, no information concerning the application is given to anyone without the permission of the applicant except in special limited circumstances. If the applicant decides at some point not to continue the attempt to obtain a patent, the contents of the application will forever be kept in confidence by the Patent Office. It is only after a patent is actually issued that the information contained in the application is made public.
For cases filed after November 29, 2000, there is still an opportunity to avoid publication. This requires certification by the applicant that the U.S. Application will not be filed in any countries outside of the United States. An applicant can change his or her mind, and file corresponding foreign applications, but the U.S. Patent Office must immediately be advised of this change. If the U.S. Patent Office is not advised within a prescribed time, the application will be considered abandoned.