Author: Howard Sheerin, SiliconValleyIP.com
Most patent practitioners understand why a client may want to request the US Patent Office not publish a pending patent application (18 months after the filing date). For example, the client may want to keep the invention secret until (or if) a patent issues, and if the patent does not issue, retain the invention as a trade secret. Patent practitioners also understand that a request not to publish should be made ONLY when the client does not intend to file a PCT or direct foreign counterpart application (specifically under 37 CFR 1.213 an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication).
A request for non-publication is easily made in the Application Data Sheet (ADS) via the appropriate check box. However, there are a few caveats that patent practitioners should consider when requesting this designation:
MAKE ACTUAL INQUIRY
A patent practitioner is required to make an actual inquiry to determine that the patent application has not been the subject of a counterpart PCT or direct foreign application and that the client has NO INTENT, at the time of filing the US patent application, of pursuing a counterpart PCT or direct foreign application. Accordingly, before blindly checking the request not to publish box in the ADS at the request of a client (or in-house counsel), be sure to make the actual inquiry so you can answer honestly if needed.
DOCKET TO RESCIND
If a client changes their mind and decides to file a PCT or direct counterpart foreign application (which is acceptable), the patent practitioner must either (1) rescind the non-publication request before filing such foreign or international application; or (2) notify the Office of such filing no later than 45 days after the filing date of the counterpart foreign or international application. Accordingly the patent practitioner should make a note in the docketing system when filing a US application with a request not to publish and/or when filing a counterpart PCT or foreign application, include in the filing check-list the task of checking the non-publication status of the US patent application. In this manner the request to rescind the non-publication request is sure to be filed prior to filing the PCT or direct counterpart foreign application.
RE-FILE AND PETITION TO ABANDON ORIGINAL TO CHANGE DESIGNATION
The request for non-publication MUST be made when a US patent application is filed. Accordingly, a request for non-publication cannot be made at any time after a US application has been filed. For example, a client cannot change their mind several months (or even minutes) after filing a US patent application. If a mistake is made and the request for non-publication is not made when filing a US patent application, the application must be re-filed with the request for non-publication (e.g,. in the ADS). In addition, a petition for express abandonment (including the petition fee) must be filed with the original application in order to avoid publication of the original application. Finally, you MUST wait for the original application to be assigned an official filing date (i.e., receive the official filing receipt) before you file the petition for abandonment. Otherwise the petition will be denied and you will have to re-file the petition with another petition fee.
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