Are utility patent applications kept confidential?

By default, utility nonprovisional patent applications are published around 18 months from the priority date. This publication occurs whether or not the patent application is allowed. A US nonprovisional patent applications that is not based on a foreign filing can be kept confidential if a nonpublication request is filed at the initial filing.

Design patent applications are not published unless and until they are granted.

Is it a good idea to keep your utility patent application confidential?

Your utility patent application serves a defensive purpose even if it is never granted. The publication of your nonprovisional application will be prior art against future applicants seeking to patent a similar invention. Even if your published patent application does not fully block a future applicant, your publication may keep future patents from claiming broader rights. This may reduce the coverage of future patents by forcing their claims to be more detailed or specific.

Before deciding whether to keep your US utility patent application a secret, you must first determine whether you wish to pursue any foreign patents. If foreign patent protection is desired, then keeping your U.S. nonprovisional patent application confidential is not an option. Keep in mind that your invention is eligible for foreign patent protection only if you did not disclose it publicly before your earliest patent filing date.

What is a nonpublication request?

A request for nonpublication will keep your utility patent application from being published unless and until it is granted. In order to make the request, you have to agree that you will not file any foreign or international patent applications for this same invention. If you do intend to apply for foreign patents, then you cannot keep the US patent application confidential. The US has a reciprocal agreement with foreign patent offices to publish utility patent applications at approximately 18 months from the priority date.

A nonpublication request may be rescinded at anytime though, as a practical matter, it would make sense to file the rescission at the time of filing an international or foreign patent application. If an international or foreign application has already been filed, the applicant has 45 days to notify the USPTO. Failure to notify the USPTO within 45 days of a foreign filing will result in abandonment of the US application.

When must a nonpublication request be filed?

A nonpublication request must be filed at the initial filing of your U.S. nonprovisional application. Note that if you waive this option at the initial filing and subsequently change your mind, you cannot seek nonpublication thereafter. If your nonprovisional application has already been filed but not yet published, you might still have time to request nonpublication. You can expressly abandon your first nonprovisional application and file a second nonprovisional application with the nonpublication request. Make sure your second nonprovisional is timely filed with any priority deadlines in mind.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com