The Danger Of Patent Filing Without A Non-Publication Request

Most patent attorneys do not see any harm in allowing a patent application to publish after 18 months.  If a provisional patent application is filed, before a non-provisional application is filed, the non-provisional application will publish 18 months from the date of filing the provisional application.  The patent attorney can prevent a patent application from publishing by filing a non-publication request, when initially filing a non-provisional patent application.  It takes no more than five minutes for the patent attorney to fill out the non-publication request.  From personal experience, I have found in many instances, allowing publication of a patent application to publish is a foolish thing to do.  The personal experience has occurred, after taking over patent applications from other patent attorneys, who did not file the non-publication request.

First, most individual and small entity clients do not want their patent application open to the public.  Further, there is a more important reason for not allowing the patent application to publish.  Once a patent application publishes, a one-year time clock starts counting down.  If prosecution of the patent application has multiple office actions, the time for prosecuting the patent application may exceed 30 months.  At this point, the inventor may want to file a continuation-in-part application to avoid the rejection of the parent application by adding a feature not found in the parent patent application.  New matter is added to the specification of a continuation-in-part patent application.  However, the inventor cannot file the continuation-in-part application after 30 months, because the published patent application will act as prior art against the continuation-in-part patent application.  The only type of patent application that can filed without the interference of the parent application is a divisional application.  A divisional application will allow method claims to be filed instead of apparatus claims, or visa-versa. 

The reader is probably wondering if there is a downside to filing a non-publication request.  There is no downside to filing a non-publication request.  There is an argument that if you allow the patent application to publish, it will block competitors from patenting the same invention.  However, if the inventor wants the patent application to publish after some period of time greater than 18 months, a request for publication may be filed at any time.  Unfortunately, there is no way to keep the patent application confidential, if a non-publication request was not included with the patent application at filing.  Finally, if the inventor does not know if they will file a foreign patent, a non-publication request can still be filed.  Filing a foreign patent application requires that a non-publication was not filed.  However, the non-publication request may be revoked by filing a request to rescind the non-publication request, within 45 days of filing the foreign patent application.  Good bookkeeping can result in the inventor having their cake and eating it too by filing the request to rescind a non-publication request, if a foreign patent application is filed.