Patent non-publication requests

patent non-publication requests
Confidential patent applications

Patent non-publication requests: Patent non-publication requests should be part of your IP strategy. Under US law (but not international law), you are allowed to file your US patent application with a patent non-publication request. When you make this request, the USPTO will keep your patent application secret (i.e., will not publish it) until when and if your patent finally issues. If you don’t request non-publication, in 18 months, the patent office will automatically put your patent application online.

When to consider filing a non-publication request:

Non-publication requests are particularly appropriate for certain types of software patent applications, such as “business methods” and related software patents. Why? Because US patent law for this type of software is presently in an unsettled state. Further, the international acceptance of business method patents tends to be limited. By filing with a non-publication request, your disclosure remains a trade secret. If the USPTO ends up granting you a patent that is broad enough to be worth disclosing your work, great! But if you don’t get something decent allowed, then you can continue to elect to keep your work hidden from the public.

Note that you must file for non-publication in your initial filing. The USPTO does not allow you to change your mind and elect non-publication later. 

When filing a non-publication request may not be appropriate:

Do you have plans to file outside the US? Then by international treaty, you must register for foreign patents within 12 months of your initial US filing date. You must also agree to allow the USPTO to publish your initial application within 18 months. Here, just don’t include a non-publication request on initial filing. Alternatively, you can file with the request and rescind this request later.

Other considerations: Unless you can identify a specific reason for non-publication, I generally recommend filing using the default, “publication” mode. Published patent applications can be useful. They help provide prior art to help you establish priority over competitors. Additionally, published patent applications look impressive to investors and can help give you more credibility.

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