Most patent applications are normally published while still pending and prior to the grant/issuance of a patent. Such publication allows the public to see the contents of the application and expands the publication of technical information to include applications that do not turn into granted patents. But when does this pre-grant publication normally occur? And are there any exceptions or variations in the normal publication schedule? This article addresses issues around when patent applications are published occur prior to grant.
When Publication Normally Occurs
In the USA, any new utility or plant patent application is normally published after eighteen (18) months have elapsed from the earliest filing date. The 18-month publication period is based on the earliest effective filing date or priority date. So if there was a prior provisional or foreign priority application, or the application is a continuing application, the 18-month timeline runs from the earliest priority or “parent” application’s filing date rather than the filing date of the current application. Publication normally occurs as soon as possible after the 18-month deadline arrives. In practice, there may be administrative delays in publication. As a result, it might not always happen at exactly eighteen months.
However, U.S. design patent applications and provisional patent applications are never published before grant (35 U.S.C. § 122(b)(2)(A)). Also, reissue patent applications are not published because they always relate to a prior patent that was already granted and therefore already publicly available.
PCT international patent applications are also published after eighteen months (PCT Art. 21). Most other jurisdictions publish patent applications after eighteen months too. Sometimes this public availability in other countries is referred to as providing “laid open” patent applications.
Exceptions to the Normal Publication Schedule
There are some exceptions to the default 18-month pre-grant publication of utility and plant patent applications.
Sometimes pre-grant publication is delayed or does not occur at all. In the USA, applicants can expressly request non-publication, which is only possible if no foreign patent protection is sought. If a non-publication request is filed, the patent and related file wrapper contents only become accessible when a patent is granted, if at all. There can also be secrecy orders that delay publication (and grant of a patent) when the application’s subject matter implicates national security interests. And applications that are no longer pending at eighteen months are not published. That situation arises if a patent is granted in less than eighteen months or if an applicant files a timely express abandonment request.
It is also worth noting that pre-grant publication only began in the U.S. starting with applications filed on or after November 29, 2000. So pre-grant publications simply did not exist in the USA prior to that time frame. Although pre-grant publications have existed in many other countries for a much longer time.
Occasionally pre-grant publications will occur earlier than the usual 18-month schedule. For instance, applicants in the U.S. can expressly request early publication and/or republication, although such requests are rare.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.