Nonpublication Requests of U.S. Patent Applications: Proceed With Caution

Most U.S. utility¹ patent applications are published after expiration of a period 18 months from the earliest filing date.  However, in some situations, an applicant may request nonpublication of the application. 

Why would an applicant consider filing a nonpublication request?

A nonpublication request may be beneficial if, for example, an applicant wishes to maintain confidentiality of the utility patent application (until if/when the application matures into a patent).

For instance, an applicant seeking to obtain patent protection for a trade secret may consider filing a nonpublication request. If a patent is not granted, the contents of the application are never published, and the subject matter may remain a trade secret. (If a patent is granted, the patent is published and the trade secret is no longer secret.)
Such a request can also be used if it is not clear that the invention would be patentable under, for example, the ever-changing standards of 35 U.S.C. § 101.

Most instances in which an applicant is considering filing a nonpublication request are those in which confidentiality of the invention during prosecution is paramount. This may be to keep the disclosure hidden from competitors or to protect inventions in rapidly changing technology such as, for example, computer-related technologies.

What are the requirements for filing a nonpublication request?

As set forth in 37 C.F.R. § 1.213(a), the requirements for filing a nonpublication request are:

1. Submitting a nonpublication request with the application upon filing. According to M.P.E.P. § 1122(II), this request must be included with the application papers and “cannot be filed separately on the same date as the filing date of the application.”
2. Stating, in a conspicuous manner, that the application is not to be published under 35 U.S.C. § 122(b). A best practice is to use the USPTO’s form SB/35 and include this form with the application papers.
3. Certifying 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 18 months after filing.² As explained in M.P.E.P. § 1122, an actual inquiry must be made:
   
   

   A certification […] cannot be made on a lack of knowledge of the applicant’s plans concerning the filing of any counterpart application that would be subject to eighteen-month publication or the applicant’s past practices or tendencies with respect to the filing of foreign counterpart applications.

4. Signing the request in compliance with 37 C.F.R. § 1.33(b).

What if, after submitting a nonpublication request, an applicant changes its mind and wishes to file a foreign or international counterpart application?

If, after submitting a nonpublication request, an applicant changes its mind and wishes to file a foreign or international counterpart application in a jurisdiction in which the 18-month publication rule applies, the applicant may file a rescission request with the USPTO prior to, or within 45 days of, filing the counterpart application. Thus, while the rules for filing a nonpublication request require an affirmative decision 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 18 months after filing, the rules also provide flexibility and instructions if the applicant subsequently changes its mind. However, given that counterpart applications would have to be filed within a 12-month window, the time period to change one’s mind and request rescission is less than 1 year.

What are advantages of filing a nonpublication request?

If a nonpublication request is granted, the specification of the patent application as well as the prosecution file itself do not become publicly available unless or until the application matures into a granted patent. During prosecution, the applicant may market products or methods that are subject to a nonpublication request as patent pending. Perhaps most importantly, competitors cannot view the application, claims, or the file history while the nonpublication request is in force.

What are disadvantages filing a nonpublication request?

For patents that issue from an application that is subject to a nonpublication request during prosecution, the reasonable royalty for past damages is not available. In contrast, an owner of an issued patent that was not subject to a nonpublication request during prosecution can seek a reasonable royalty for infringement that occurred prior to issuance of the patent and after publication of the patent application if the issued claims and published claims are of the same scope.

A second disadvantage is an obvious one, namely, that once nonpublication is requested, the applicant may not file a foreign or international application unless the applicant successfully rescinds the nonpublication request in the U.S.  If such a subsequent filing is made and a rescission request is not filed prior to, or within 45 days of, such filing, the application subject to the nonpublication request is abandoned by statute.³  It should be kept in mind that by foreclosing the possibility to file outside the U.S., an eventual patent could be valued at a lower price in the event licensing or sale of the underlying technology is envisaged.

Takeaways

If the confidentiality of your application during pendency is imperative and you are certain you do not wish to file outside the U.S., submitting a nonpublication request could be beneficial.  Be sure to include the nonpublication request with your application papers as filed and be mindful of rescission requirements in the event a counterpart foreign application is later filed.

Endnotes

[1] This article only applies to utility patent applications.  Provisional and design patent applications are not published. 35 U.S.C. § 122(b)(2)(A)(iii) & (iv).

[2] Additionally, if a foreign or international application was previously filed in a country requiring publication after 18 months, but abandoned prior to publication, a nonpublication request is improper since the application was subject to publication, even if it was not eventually published.

[3] 35 U.S.C. § 122(b)(2)(B)(iii) (“A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned.”).