Publication of Pending Patents

Introduction

The U.S. Patent Laws have been changed to provide for publication of pending U.S. Utility Patent Applications 18 months after filing. Although patent offices in most countries published applications, the United States had maintained pending applications as confidential. Applicants may avoid publication by certifying at the time of filing that no other foreign applications or international treaty applications have been filed or will be filed, or meeting other exceptions.

Publication of Pending Patent Applications

Sec. 122 of the patent laws is amended to provide for publication of pending patent applications 18 months from the earliest filing date sought, as is commonly done in most countries.

Publication is effective for all applications filed on or after November 29, 2000

If the corresponding published foreign application does not disclose as much as the U.S. application, portions may be redacted prior to publication

Publication may be made earlier upon the request of the applicant

Published applications are treated as prior art under Section 102(e), except for published international treaty applications, which have 102(e) effect only if such application designating the U.S. is published in English

Applications are treated as being not filed in the U.S. under Section 102(e) if based on a PCT application

Exceptions

An application will not be published at 18 months if one of the following occurs:

• the application is no longer pending
• the application if subject to a secrecy order for security purposes
• the application is a provisional application
• the application is a design patent application
• at the time of filing, the applicant certifies that the invention disclosed in the application will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication 18 months after filing

1. an applicant may rescind the request not to publish at any time
2. an applicant that requests that the application not be published, but subsequently files an application in a foreign country or under an international agreement, must notify the Director by filing within 45 days of the date of the filing of such foreign application or international application
3. failure to provide notice to the Director shall result in the application being regarded as abandoned