This 3-part series of posts examines the benefits, disadvantages, and pitfalls concerning nonpublication requests for patent applications. Part 3 of this series focuses on the pitfalls to be aware of when filing nonpublication requests.

Pitfalls to be Aware of When Filing Nonpublication Requests

There are a number of pitfalls that companies who elect not to publish a patent application should be aware of, including:

• The nonpublication request must be filed at the time of filing the patent application¹: This means the nonpublication request must be included with the application papers. In other words, you cannot file the nonpublication request after filing a patent application even if the nonpublication request is filed on the same date as the patent application itself. However, failure to file the nonpublication request with an application can be corrected (subject to a few limitations and fees). For example, (1) an applicant may expressly abandon the filed application in favor of a continuation application filed with a nonpublication request, or (2) file a request to convert the patent application into a provisional patent application (be cautious on how this may impact any priority claim present in the original application), and upon conversion of the provisional application, file the nonpublication request with the conversion application papers.

• A certification must be made 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 filing²: A nonpublication request is not appropriate if the applicant has not yet made a decision whether to file a counterpart application in a foreign country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing. Moreover, a certification cannot be made based 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. The fact that a particular applicant has a tendency to file counterpart applications for fewer than fifty percent of its U.S. applications is not alone an adequate basis for filing all or any of the U.S. applications with a nonpublication request. The applicant must have an affirmative intent not to file a counterpart application, and not just the absence of any intent or plan concerning the filing of any counterpart application that would be subject to eighteen-month publication. Thus, a nonpublication request is only appropriate if the applicant’s intent at the time the nonpublication request is being filed is not to file a counterpart foreign or international application that would be subject to eighteen-month publication. The filing of a false certification can result in the invalidation of any patent that is ultimately granted on the patent application and/or disciplinary action for the practitioner that filed the request.

• Notice of foreign filing must be made no later than 45 days after the date of filing a counterpart application in a foreign country, or under a multilateral international agreement that requires publication of applications at 18 months after filing³: Failure of the applicant to provide such notice within the prescribed time period shall result in the application being deemed abandoned, forfeiting patent protection in the US. This abandonment is problematic because it can occur automatically and can go unnoticed. Note that if the foreign counterpart application is less extensive than the application originally filed in the USPTO, the applicant can submit a redacted copy of the application for publication with the notice of foreign filing, which will eliminate any part or description of the invention in the application that is not also contained in any of the corresponding applications filed in a foreign country.

• The mere filing of a request to rescind the previously filed nonpublication request may not comply with the notice of foreign filing requirement: If an applicant rescinds the nonpublication request on or before the date of a foreign filing, no notice of foreign filing is required. However, if an applicant files a corresponding foreign application after filing the original application and before filing the rescission, and the rescission did not also include a notice of foreign filing, a notice of foreign filing (not merely a rescission) is required to be filed within 45 days of the date of the foreign filing. It is important to remember that for an applicant submitting a nonpublication request and filing a counterpart application in a foreign country before filing the rescission, the applicant must provide affirmative notice of the foreign filing to the USPTO (a subsequent request to rescind the previously filed nonpublication request is not considered constructive notice of the foreign filing). A failure of the applicant to provide such notice within the prescribed time period shall result in the application being deemed abandoned. Form PTO/SB/36 may be used to both rescind a nonpublication request and provide notice of foreign filing.⁴

• Abandonment is problematic because it can occur automatically and go unnoticed: Although the USPTO typically issues a notice of abandonment for applications in which the applicant fails to rescind the nonpublication request and/or provide a notice of foreign filing within the prescribed time period, the USPTO has been known to fail to provide such notice of abandonment. This does not mean the applicant can bury its head in the sand and think it got one over on the USPTO. Most likely, the application will be considered invalid and abandoned as of the date of expiration of the prescribed time period. This can be devastating to a client that has been relying on a patent falsely issued by the USPTO. However, if the failure of the applicant to provide such notice within the prescribed time period is discovered prior to issuance of the patent, the applicant can cure the defect by treating the application as abandoned, filing a petition to revive the application to be able to continue prosecuting the application, and concurrently providing the notice of foreign filing.

Footnotes