Chapter §11.06 Publication of Pending Nonprovisional Applications

• Jurisdiction: United States

§11.06 Publication of Pending Nonprovisional Applications

Historically, the USPTO maintained all patent applications in secrecy throughout their pendency.¹⁸⁶ The public did not see the content of the applications unless and until they issued as patents. This led to the problem of so-called "submarine" patents. Such patents stemmed from applications that intentionally were kept pending in secrecy for many years through the filing by their owners of multiple continuation applications (discussed below).¹⁸⁷ When patents finally issued on these applications (i.e., when the "submarines" finally surfaced), it was often to the great consternation of competitors who had no prior notice and were now suddenly liable as potential infringers.

This lack of transparency dramatically lessened with the implementation of "18-month publication" procedure as part of the AIPA.¹⁸⁸ Under current law, the default rule (consistent with foreign patent regimes) is that a nonprovisional (regular, "full-service") U.S. utility patent application will be automatically published 18 months after the earliest filing date sought by the applicant.¹⁸⁹ An applicant must affirmatively opt out to avoid publication, as described below. Publication of pending applications is online at the USPTO's website.¹⁹⁰

Publication can be avoided on certain limited grounds; most notably, by certifying to the USPTO at the time of filing that the applicant has not and will not file any other applications on the same invention in foreign countries or under multinational agreements that would require publication 18 months after filing.¹⁹¹ In other words, a pending nonprovisional patent application must be purely domestic to avoid 18-month publication. Moreover, design patent, provisional, and reissue applications are not published.¹⁹² Nor are applications that have already been abandoned before the 18-month publication deadline,¹⁹³ or subject to a secrecy order.¹⁹⁴

In fiscal year 2017, the USPTO published over 373,000 applications.¹⁹⁵ A government study reported in 2004 that about 85 percent of U.S. patent applications filed by large entities were published at 18 months after filing.¹⁹⁶

A patent cannot be enforced against infringers until it issues. Thus, patent owners (particularly small entities) were justifiably concerned that their inventions might be copied starting at 18-month publication, with no recourse for the applicant. That is, applicants would have no way to stop copiers during the period between publication and issuance. In response to these concerns, Congress implemented a provisional compensation right.¹⁹⁷ The provisional compensation right gave owners of applications that ultimately issued as patents the right to retroactively seek reasonable royalty damages for certain...