U.S. patent applications and confidentiality

Currently, an application for a United States patent remains confidential with in the U.S. Patent and Trademark Office (USPTO) and unavailable to the public until that patent issues. Issuance of any given patent is two to three years from the date an inventor filed the respective application.

In several countries other than the United States, pending patent applications are published 18 months from the date the inventor filed the application, or by a priority date, if applicable. Though such publication is early, it occurs regardless of patent issuance.

Early publication: Pros and cons. A theory held outside the U.S. justifies early publication of a patent application on the basis that if the particular technology becomes accessible to the public early, the state of the technology will not be stagnant; the public can begin furthering the technology in advance of patent issuance.

Many people within the U.S. have sought early publication of a patent application on the basis of a theory composed of three elements:

* Society can benefit from early advancement of the technology.
* Inventors can avoid a maturing patent by designing around it.
* Issues of infringement upon a patent can be anticipated and avoided.

However, there are other sides to the argument. Early publication of a patent application gives others time to design around another inventor's technology. In addition, early publication can potentially injure or negate the inventor's trade-secret rights.

Congress to make the call. Regardless of which way one leans in this argument, there is current legislation in the U.S. Congress (HR 1733) to introduce early publication of a U.S. patent application. The legislation has substantial support and may eventually become law and part of the U.S. patent practice.

Various strategies have been devised to protect an original inventor's rights and to also protect the competitor while still under the new provision for early publication.

Theoretically, an inventor can establish his or her rights by maintaining certainty that the published application will correspond to any issuing patent. He or she can also provide notice to any potential infringer.

On the other hand, a competitor can watch for the publication of a particular patent application and then, upon its publication, direct his or her product research and development accordingly. The competitor can even cite relevant prior art and present it to the USPTO for consideration during the application procedure for the original patent.

The interests of the individual inventor and corporate America are different; they are most likely in disagreement regarding the issue of early publication of a patent application.

If one were to strategize and implement an impact on this legislation, he or she should begin now.

Legal Questions

Q.Why do so many Legal Forum columns discuss pending legislation?

A.Intellectual property (i.e. patents, copyrights, trademarks, and trade secrets) has a big impact on the competitive position of the United States in the world. Therefore, such matters are important.

Q.Can inventors protect themselves under a provision of early publication of a patent application?

A.Theoretically, yes. Practically, time will tell. In theory, if a published application is the same as a patent that will eventually issue, the original inventor may obtain damages from the infringer from the date of the publication. But, this is only if the original inventor had notified the infringer of his or her patent application, or if the infringer was aware of the original application due to his or her own efforts.

Q.What can a competitor do about an early publication?

A.The competitor can avoid the technology, design around the problem, consider citing relevant prior art to the USPTO for consideration while the original patent is pending, or try to purchase or license the technology.

Q.Is early publication of a patent application now a law?

A.It is law in countries other than the United States, but it is only a pending bill in the United States. The bill is patterned after non-U.S legislation. So, a study of non-U.S. law may be helpful in determining how to react to the bill and predict its impact.