Warning to Inventors: Failure to Follow Obscure USPTO Rules Can Kill Your Patent Application

As any patent attorney will tell you, you need to keep your invention confidential until you file a patent application. But what some patent attorneys might not tell you is that requesting post-filing confidentiality for your patent application can have serious adverse consequences, even killing your application entirely under certain circumstances.

The United States Patent and Trademark Office (USPTO) maintains a stringent set of rules for patents. Overlooking one or more may cause serious consequences for your patent application. In some cases, failure to follow the rules may even result in you permanently losing the right to patent your invention. Once case in point arises when an application requests that the USPTO keep its patent application confidential and then files a foreign patent application for that invention.

Patent applications in the U.S. (and in many other countries) are confidential for the first 18 months after filing. Typically, they are published after the 18-month period. This allows applicants a year and a half of secrecy to develop a product covered by a patent application prior to the disclosure of their patent application on the USPTO website. During this 18-month period, the public can only obtain the title, inventors, application number, and filing date of an application, but not the substance of the application.

There is an option in the patent rules which allows applicants to delay publication of their patent applications until their patent applications are granted. Under this option, the invention is, typically kept confidential for a few years. However, this can only be done in cases where the applicant agrees not file for foreign patent protection based upon the U.S. patent application. According to the Paris Convention, applicants are allowed to wait until one year from the filing date of the U.S. patent application to file in foreign countries. But applicants who opt to keep their applications confidential until issuance are prohibited by law from taking advantage of this foreign filing provision unless they withdraw their non-disclosure requests in a timely manner.

I was told of a case in which a small U.S. company (less than 20 employees) applied for a patent, intending to manufacture a product for sale in the U.S. The applicant checked the box on its application requesting the non-publication option and thereby promising not to file an application for patent protection for the invention in any other country. This option was selected at filing, pursuant to USPTO rules.

About six months after filing, the owner of the company learned of an opportunity partner with a company in Canada that markets a similar product under which the U.S. company would and also use the Canadian company’s supplier to make inexpensive, quality parts. The supplier was in Mexico.

The U.S. company then filed patent applications to protect its invention in both Canada and Mexico. The company’s patent attorney later took steps to notify the USPTO of the foreign filings and to rescind the non-publication request well in advance of the publication date. However, the USPTO sent a notification to the patent attorney indicating that the notifications of the patent filings in Canada and Mexico were required to have been made within 45 days filing patent applications in those countries. Since the notice of the foreign filing was made more than 45 days after the foreign patent application files, the patent application was determined by the USPTO to have been abandoned, forfeiting patent protection in the U.S. for the company’s invention.

There can be harsh consequences of violating even an obscure USPTO rule. This ruling was a lesson to the inexperienced patent attorney and should serve as a cautionary tale to inventors everywhere.

The following statutory and regulatory provisions apply to this matter: 35 U.S.C. 122(b)(2)(B); Manual of Patent Examining Procedure” (MPEP), Section 1123.

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