The Pros and Cons of Nonpublication Requests

September 2010

Pursuant to international treaty, all patent applications filed in the United States are published eighteen months after the earliest filing (priority) date. In this context, the term "published" does not mean that the patent has issued; it simply means that the contents of the patent application are published online and made available for anyone to see. In this regard, the patent application becomes prior art the moment it is published.

The only exception to this general rule is that a U.S. patent applicant may file a patent application with a nonpublication request. In that case, the application will not be published until the patent issues (and what is published is the issued patent, not the application as filed). Once the patent issues, the entire file history becomes publicly available.

One advantage of filing a nonpublication request is that it makes it more difficult for others to oppose your patent application prior to issuance because they may not find out about it until the patent issues, at which time the patent carries a legal presumption of validity. In fact, a nonpublication request makes it virtually impossible for anyone to make a Rule 99 submission (one form of opposing the issuance of a patent) because a Rule 99 submission must be made prior to issuance of the Notice of Allowance.

Another perceived advantage of a nonpublication request is that third parties have less time to work on ways to design around the patent because they will not have access to the claims until after the patent has issued.

We typically do not file patent applications with nonpublication requests, however, because we believe the disadvantages of doing so outweigh the advantages. One significant disadvantage is that the patent holder may not file any foreign patent applications if a nonpublication request has been filed, nor may an applicant file a nonpublication request if a foreign patent application has been filed. Furthermore, if the U.S. patent application is filed with a nonpublication request and then a subsequent international (i.e., Patent Cooperation Treaty) or foreign patent application filed, the U.S. patent application will be deemed abandoned by the U.S. Patent and Trademark Office. Thus, the cost of neglecting to withdraw the nonpublication request prior to the filing of a foreign patent application is high.

Other disadvantages of a nonpublication request include the fact that monetary damages for patent infringement can be collected back to the date of publication, but if publication does not take place until issuance of the patent, then several months and possibly even years of potential damages recovery are eliminated. Lastly, as alluded to above, if a nonpublication request is filed, then damages may only be collected back to the date of issuance of the patent as opposed to the date of publication.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.