In response to legislation that became effective on Nov. 29, 2000, the USPTO began publishing patent applications within 18 months of the filing date of the application. Published applications are available for viewing on the USPTO’s website.
An applicant who wants to have his or her applicant published may opt for early publication or may have the applicant published multiple times.
All patent applications are not subject to publication. However, an applicant should keep in mind that non-publication is only possible when the applicant does not file a foreign application that will be published within 18 months.
A key point to all applicants who want to maintain the secrecy of their applications is that they must file a request for non-publication at the time of filing. The decision not to publish can be rescinded.
An applicant should also keep in mind that the requirement to publish cannot be avoided by filing a U.S. patent application first. An applicant who files a foreign application after filing a U.S. application is required to notify the USPTO within a finite period of time. Also, when a foreign application differs from a U.S. application, it may be possible to publish a redacted version of the application to avoid disclosure of material that was only present in the U.S. application.
There are two primary benefits of publication. First, the application becomes prior art as of the date of filing, even if it never issues as a patent. The second benefit is provisional patent rights. The legislation that mandated publication of certain patent applications provides for reasonable royalties for infringement that occurs between the publication date and the issuance date.
There are two key requirements to obtain such provisional rights. First, the patent claims must be substantially similar in form in both the published patent application and the issued patent. Second, the accused infringer must have actual notice of the patent application.