Just One of Those Things: Request for non-publication of your patent application

U.S. patent practitioners are familiar with patent office form PTO/SB/35 i.e., request for non-publication [hereinafter ‘the form’].[1]  Proper submission of this form prevents the complete disclosure of a United States utility patent application on the internet unless and until the application becomes a full-fledged patent.[2] Without this form, the United States patent office will publish the entire application on the internet approximately eighteen after its submission. Thereafter the application remains publicly available on the internet indefinitely. Furthermore, the application remains publicly available even if the applicant never receives a patent thereon!

So, here are the resulting significant disadvantages of failing to properly submit this form. First, the applicant’s business competitors may easily access an invention’s innovative features because they observe them online. These business competitors may then commercially profit during an application’s pendency in the patent office, and where this pendency could last several years or forever. Furthermore, the application must fulfill several legal requirements for the patent owner to recover for infringement which occurred prior to the patent’s issue date. Unfortunately, these legal requirements prove extremely difficult to achieve as a practical matter,[3] and in any event they are extremely expensive to litigate.

The significant prohibition to a request for non-publication is the submission of an application in another country   . Fortunately, if an applicant submits a request for non-publication and thereafter decides to submit an application internationally, there is a patent office form for withdrawal of the original non–publication request. However, this ability to change one’s mind in good faith is not symmetrical: If the applicant does not submit the written request with the application, then it cannot be submitted at a later date.  Consequently, applicants should carefully evaluate their markets prior to finalizing their patent strategy. In particular these applicants should resolve whether they should risk forfeiting their entire research and development investment. In other words, is total online disclosure worth this risk compared to the value of as yet unrealized sales in other countries.[4]

Another downside of publishing a patent application is its greater vulnerability while pending in the U.S. patent office. Although issued patents receive a presumption of validity, pending patent applications are not so entitled. Moreover, under U.S. patent law third parties (including business competitors) may submit adverse documents to the patent examiner.[5]These documents often decrease the possibility of achieving a patent if they comprise information which is relevant to patentability of the applicant’s subject matter. In sum, is there an easier cost-effective manner by which to prevent these folks from accessing your application than by submitting a request for non-publication?

© 2021 Adrienne B. Naumann, Esq. All rights reserved. Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.

[1] There is no patent office fee for submission of a request for non-publication

[2] 35 U.S.C. section 122 (b)(2)(B); 37 C.F.R. 1.213.

[3] 35 U.S.C. section 154(d). The requirements are (i) an accused infringer must have had actual notice of the published patent application and (ii) the invention as claimed in both the published application and patent must be substantially identical.

[4] The author’s U.S. clients have accessed sufficiently large U.S.  markets while their inventions are most vulnerable. On the other hand, applicants from countries such as Israel, the Netherlands or Belgium may not have this option.

[5] 35 U.S.C. 122(e).


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