Non-provisional U.S. patent applications are published 18 months after the filing date (or priority date) of the application by default. However, applicants of U.S. patent applications have the option to file a non-publication request if they have not filed their patent application in another country or filed an international patent application.
An applicant may wish to keep their application private so that their competitors are less likely to find out what they are working on. Further, if the patentability of an invention is uncertain or ultimately found to be unpatentable, the underlying application can be abandoned without alerting competitors to information that could potentially be taken advantage of without penalty of infringement.
For those with a limited budget looking to find a middle ground between patenting their invention in multiple countries and merely protecting their invention as a trade secret, the option of filing a U.S. application with a non-publication request is worthy of consideration. It is especially worth consideration for protecting inventions that are difficult but not impossible to reverse engineer, or for instances in which the patentability of the invention is uncertain. However, if the applicant wishes to file elsewhere (e.g., Canada), then they cannot keep the U.S. patent application a secret.
If an applicant makes a request upon filing to certify that the invention disclosed in their application has not and will not be the subject of an application filed in another country (or under a multilateral international agreement) that requires publication of applications 18 months after filing, the application will not be published until it is granted. Such eventual patents are sometimes referred to as “submarine” patents because they stay “submerged” until they are granted.
An unpublished patent application does not form a part of the prior art until it is granted and as such disadvantageously would not be cited against later filed patent applications. Additionally, as the application is unpublished, the applicant is not entitled to royalties from infringers until the application is published or issues to patent.
A request for non-publication must be made at the time of filing the application; once an application has been filed a request for non-publication can no longer be made. However, a request for non-publication may be rescinded at any time by the applicant should they choose to file foreign applications at a later date.
This article is provided for informational purposes only and is not legal advice. For further information or assistance in obtaining a patent, please contact us by phone (416) 847-0054 or by email at mail@methodlaw.ca.