Nonpublication Requests For Patent Applications Part 2: Disadvantages

This 3-part series of posts examines the benefits, disadvantages, and pitfalls concerning nonpublication requests for patent applications. Part 2 of this series focuses on the disadvantages of not publishing a patent application.

Disadvantages of Not Publishing a Patent Application

There are a number of disadvantages companies should consider when electing not to publish a patent application, including:

  • Limited patent portfolio: A nonpublication request is only appropriate if the applicant’s intent at the time of filing the nonpublication request is not to file a counterpart foreign or international application that would be subject to eighteen-month publication.1  This certification requirement means an applicant must have developed a limited patent strategy that includes not filing counterpart foreign or international patent applications for at least the application intended not to publish. This could be disadvantageous for applicants doing a significant portion of their business outside of the United States that could be protected by the counterpart foreign or international patent applications.
  • Potential for missed royalties: For patents that issue from an application  subject to a nonpublication request during prosecution, a reasonable royalty for past damages is not available. For example, if a claim of an issued patent found to infringe is substantially identical to a previously published claim, the applicant could receive royalties for infringement dating back to the application publication date (but no earlier than the date the infringer had actual notice of the published patent application).2  This provisional right to past damages is not available if the application never publishes.
  • Missed opportunity to create prior art or a defensive publication: If a patent application is published, it becomes prior art.3  This can be helpful to reject other third-party applications (e.g., a competitor’s patent application) for similar innovations. However, the publication of a patent application never becomes prior art if the applicant files a nonpublication request and thus there may be a missed opportunity to prevent other third-party applications from issuing as patents. Morevoer, if one of the patenting strategies of the applicant is to develop defensive publications (e.g., for purposes of technology licensing, sale generation, limited funding, carving out a technology space, etc.), filing of a nonpublication request may be perceived to be in direct conflict with such strategy.
  • Effect on potential strength and/or perceived enforceability of a patent: As described in Part 1 of this series, a competitor that is aware of a patent application via its public disclosure can provide prior art to the USPTO that might have an effect on anticipation or obviousness analyses of claims of the application through a Third Party Preissuance Submission.4  Although it may seem counterintuitive to want a competitor to submit prior art against an applicant’s patent application, if the USPTO examiner determines the submitted prior art does not negatively affect the patentability of the claims in the patent application, the issued patent may be perceived to have less of a chance of being invalidated and more of chance of being enforced. This may help diminish or prevent subsequent validity challenges to the patent, for example, in an inter partes review.
  • Limitation on defensive patenting strategies: Defensive patenting is the strategy of obtaining patent protection without necessarily intending to assert or enforce those rights associated with a patent. Instead, the protection offered by patents to companies of defensive patenting comes from minimizing the risk of being sued by competitors. This risk minimization can be realized by building an arsenal of patent applications and patents to deter competitors from suing. If a competitor does sue, the company will then have a large portfolio of applications and patents to use for cross-licensing with the competitor or for use in a counter-claim of infringement against a competitor. However, if competitors have limited knowledge of the arsenal of a company (i.e., patent applications with the potential to issue as patents) because of nonpublication requests, the competitors may be more inclined to file suit.

Please contact the author with any questions and stay tuned for Part 3 of this series, in which the author will identify potential pitfalls to be aware of and summarize various best practices associated with nonpublication requests.

Footnotes

1 35 U.S.C. § 122(b)(2)(B)(i); 37 C.F.R. § 1.213(a)(3).

2 35 U.S.C. § 154(d).

3 35 U.S.C. § 102(a)(1); 35 U.S.C. § 102(a)(2).

4 35 U.S.C. § 122(e).

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