Not very long ago, patent applications were maintained in secrecy until they issued as patents. Today, however, an application is published 18 months after its effective filing date, meaning that anyone can see your invention after you file it. By filing a non-publication request, though, you can keep your application secret during prosecution. The major trade-off, though, is that you won’t be allowed to then file for foreign patents. Let’s go over some reasons you may or may not want to file a non-publication request.
I want to keep it secret!
- I want to make sure that no one knows about my invention until the last minute – the moment the patent issues.
- My patent application description discloses a trade secret that I want to preserve as long as possible.
- I want to prevent big companies from learning about my invention and doing some serious R&D to discover a workaround. They might file patents that surround my invention and thus keep me from practicing and profiting from my invention.
- I don’t care about ever obtaining patent protection internationally.
I think publishing the application is a good idea!
- If someone copies my invention while it is in prosecution, I can try to get damages for the infringement that occurs between publication and issuance.
- I can use the publication as prior art and prevent others who file after my publication date from getting a patent.
- I want to file internationally.
- Everyone else is doing it.
- The request must be filed with the application. Federal statute requires that the non-publication request be made contemporaneously with the filing of the application.
- You can file a non-publication request and then rescind it later if you change your mind.
- If you made a non-publication request and then filed a patent application for the same invention in another country, you only have 45 days to notify the Patent Office. If you inform the PTO more than 45 days later the foreign filing, your US application will be abandoned.