Early Publication: Is It Right For You?
Under 37 CFR 1.211, nonprovisional U.S. patent applications currently publish automatically 18 months after the earliest effective filing date. Generally, the earliest effective filing date is either the date the nonprovisional application was filed or the filing date of a provisional application to which the nonprovisional application claims priority. However, an applicant can request that the nonprovisional application be published earlier than that 18-month timeframe. Under 37 CFR 1.219, an applicant can submit a request to expedite publication, which reduces the 18-month timeframe to approximately 14 weeks after the completed application is filed. This can have both benefits and risks and should, therefore, be evaluated on a case-by-case basis.
Early publication can provide several potential advantages to an inventor, such as creating prior art in the field, thereby interfering with competitors’ attempts to file a patent on similar technologies after publication. Once an inventor’s application is published, it immediately acts as prior art for competing inventors. Additionally, early publication can serve as a general notice of the inventor’s activity. Inventors may be entitled to a reasonable royalty from an infringer with actual notice of the published patent application under 35 USC 1.54(d). Therefore, the earlier the patent application is published, the farther back the reasonable royalty can reach. Finally, early publication can be beneficial to an inventor, as having a published patent application can lend credibility in the marketplace, allowing the inventor to more readily court investors or other interested parties.
However, early publication is not without its risks. Primarily, by publishing early an inventor’s patent application will become readily accessible by competitors. Early publication allows a competitor to more easily design around an inventor’s pending patent application, thereby avoiding any risk of infringement. This is especially likely in highly competitive markets. Additionally, as the patent application is still pending, the inventor will not be sure of the scope of protections granted by an eventual allowable patent, which generally gets narrowed over the course of prosecution. Therefore, promises made or expectations of investors or potential licensees will be difficult to manage. Finally, another major pitfall of early publication is pre-issuance submissions by third parties. Specifically, under 35 USC 122(e), a third party may submit additional prior art to the patent office to be used against an inventor’s pending application during prosecution. Once a patent application is published, any third party, such as competitors in the market, can submit additional information to the Patent Office within a specific timeframe. These submissions can take the form of published patent applications, issued patents, or other printed publications of relevance to the examination of the application. These materials can be used against the inventor during prosecution.
Ultimately, the decision to request early publication or to allow the patent application to publish normally is one that should be determined on a case-by-case basis. As a general rule of thumb, early publication provides the greatest benefits to inventors whose products are nearing the marketing stage at the time of filing. Once the inventor is ready to enter the marketplace, there is minimal time for a potential competitor to use an inventor’s own patent application against them. Otherwise, if the inventor’s product is years away from entering the market, waiting for standard publication may be the best course of action.