Maintaining Secrecy in Pending Patent Applications: Procedures and Pitfalls

Jon Platt

Chinese general Sun Tzu, in his work The Art of War, stated that “the key to victory is the ability to use surprise tactics.” What is beneficial in warfare often makes sense in business as well, and when it comes to patents, there is a potential advantage to be gained in hiding pending applications from competitors.

Until 2000 U.S. utility patent applications were maintained in secrecy while they were pending at the U.S. Patent and Trademark Office (USPTO). That year the United States joined most of the rest of the world in publishing pending patent applications, with the law stating the general rule that “each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title,” 35 USC 122(b)(1)(A).

An exception was provided for applications that have “not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing,” 35 USC 122(b)(2)(B)(i). Those applications need not be published, but taking advantage of this provision to keep an application secret while it is pending at the USPTO requires strict adherence to procedures, and there can be severe consequences if a claim in nonpublication is made in error, or if it is not promptly withdrawn when an applicant is no longer entitled to it.

If a request for nonpublication is to be made, it must be made “upon filing,” 35 USC 122(b)(2)(B)(i), being “submitted with the application upon filing,” 37 CFR 1.213(a)(1). As the Manual of Patent Examining Procedure (MPEP) states, the timing requirement “is a statutory requirement and cannot be waived.” MPEP 1122(A). There is no way to make a valid request for nonpublication after an application has already been filed.

The nonpublication request must conspicuously request nonpublication, and the signer of the request must certify that the application “has not been and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication.” A couple of things are noteworthy about this certification.

First, the certification is not appropriate if there has been a prior filing under a jurisdiction that requires eighteen-month publication, even if that application has already been withdrawn or abandoned. As the MPEP puts it, a “nonpublication request is not proper even if the foreign or international application is abandoned before the foreign or international application is published.” MPEP 1122(I).

Second, the “will not be” part of the certification involves future events. Making certifications about the future is hazardous – how can one be sure of what will or will not happen in a time yet to come? Fortunately the MPEP provides some guidance here. The certification is not appropriate “if the applicant has not yet decided whether to file a counterpart application” that requires eighteen-month publication, or based on a lack of knowledge of the applicant’s plans or even the applicant’s prior tendency not to file outside the U.S. MPEP 1122(I). Instead the “applicant must have an affirmative intent not to file a counterpart application” in order for the certification to be proper. Id.

But plans change. What if the certification is made (properly, one hopes) and then a disqualifying counterpart filing is subsequently made? This puts an obligation on the applicant to either affirmatively rescind the nonpublication request, or to notify the USPTO within 45 days after the counterpart eighteen-month publication filing. 35 USC 122(b)(2)(B)(ii)-(iii). The failure to do so results “in the application being regarded as abandoned.” 35 USC 122 (b)(2)(B)(iii). (Such an abandoned application can be revived, but only by the payment of considerable fees, and at the further cost of many months of delay.)

A silver lining regarding that draconian penalty is that if the patent has issued before the failure to timely rescind an improper nonpublication request is noticed, it probably does not affect the validity of the patent. That was at issue in a petition decision, In re Patent No. 7,229,636 (May 13, 2009), in which a patentee belated discovered that a nonpublication request might have been required, due to the filing of a related PCT application (which was not a counterpart application, according to the patentee). The patentee petitioned for recission of the nonpublication request and, if necessary, revival of the U.S. application which had already issued as a patent. The petition was denied and the patentee’s fees were refunded on the basis that absent inequitable conduct, “the examiner's or the applicant's absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued” (quoting from a Federal Circuit opinion). Once a patent issues, apparently, many sins are washed away.

While nonpublication requests can be useful in maintaining the secrecy of pending applications, the proper procedures must be followed, and prompt action should be taken if the request must be rescinded.

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