First Publication Date: 5th November 2009.
In US, it is possible to block publication until grant of a patent application provided certain conditions are met. According to § 1.213 of MPEP, if the invention disclosed in an application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing, the application will not be published, provided:
(1) A request (non-publication request) is submitted with the application upon filing;
(2) The request states in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b);
(3) The request contains a certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication at eighteen months after filing; and
(4) The request is signed in compliance with § 1.33(b).
Recently a US inventor/applicant asked me if there is any advantage of publishing a patent application from an applicant’s point of view.
Publication of an application may provide a significant advantage to the applicant in the event of an infringement, when the claims do not change substantially during prosecution from initial publication. The advantage is that it may be possible for an applicant to obtain reasonable royalty from an infringing party from the date of publication, provided he has served appropriate notices.
However, publication of a patent application brings the application in to public domain earlier and may lead to a few disadvantages for the applicant. Publication of a patent application before grant may result in:
– others including competitors to know what the applicant is doing in terms of technology/product development
– increased public scrutiny before the application is granted and might lead to pre-grant oppositions from competitors or other interested parties, and thereby delaying the process of grant of application
Apparently, the person that asked me this question operates in a cut throat competitive environment and does not want to reveal to public what he/his company is working on till as late as possible. Therefore, for this applicant, patent publication may present more risks than advantages. At the same time, this applicant may lose rights to obtain reasonable royalties from the infringing party for the period of infringement before grant of application.
Therefore, there is no simple answer to whether or not there are advantages of publishing a patent application. While there are advantages, there are also disadvantages. It really depends on the circumstances. Careful consideration must be given to pros and cons before taking a decision. Consulting an expert before taking a decision is always a good idea.
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