As a global patent searcher and competitive intelligence provider, it’s important for me to know when documents will publish. For example, most of the worldwide patenting authorities default at publishing utility patent applications at 18 months.
Patent attorney Andrew Eisenberg’s thoughts here on the “not to publish” option for U.S. patent applications are important since using this option will delay the date of publication for an additional 1-3 years – and only if the patent issues.
For companies in the same technical space, this means they can’t learn the newest direction of the filing company or the state of the art until much later – if ever! This significantly ups the ante for you to stay abreast of your competition and the state of the art. In the worst case, your newest products may not have legal clearance, better known as your “Freedom to Operate,” since a newly published patent can show up without any warning…even after doing the appropriate level of due diligence.
So, what are your options? The best option is to implement one or more patent alerts to monitor the filings of your competition AND your technology space. Patent alerts deliver email updates (or phone calls if you want) when or if a problem materializes. The alert won’t make the problem go away, but it provides you a longer lead time before receiving that nasty “cease and desist” letter.
Overall, deciding which patent application method is best for your company’s innovation strategy is very important and should be made in consultation with an IP Attorney/Agent.
Filing a Patent Doesn’t Mean You Must Reveal All Your Secrets
One of the hardest choices facing any new startup or entrepreneur is whether or not to pursue a patent.
Regardless of your opinion on value or the overall benefit to society, if you’re starting an innovative business the answer almost always is YES. Patents will be important to your potential investors, purchasers and partners.
Patents provide an initial basis for valuing the company (when you have little else), and act as a barrier to competition. In fact, a new patent may be one of the few advantages you have over your established competition.
However, like anything else, there are some risks to be aware of before you plunge into the patent process. I often hear from my clients that when you file a patent you are:
- Giving your competition a heads-up on you plan
- Providing a roadmap to your competitors on how to build your product
- Defining your rights in a way that your competitor can avoid them
All of these worries really come down to one issue – fear of publishing your patent for the world to see.
Why Are Patents Published?
The publication of a patent goes back to what was originally intended by a patent in its most simplest form –a patent is granted by the government to give you exclusive rights to produce or practice the “idea” in exchange for you telling the world how it works.
The process is designed to reward innovation but at the same time ensure everyone benefits from it, at least in the long term. So your patent gives you 20 years of exclusivity in exchange for the public at large being able to practice the idea when your rights expire. And to practice the idea, the public has to know how it works. So, publishing your patent informs the public.
When Are Patents Published? Or Not?
While it is true that all patents will publish when issued, it doesn’t have to publish today or even tomorrow. Most people don’t realize that your patent doesn’t have to publish UNTIL the government gives you the rights to exclusivity – in other words, on the day the patent issues.
In most cases, this means the publication is deferred for 3-5 years from the time that your patent is first filed. Personally, I rarely publish my client’s patents until they have issued.
The process for delaying publication of the contents of your patent is not difficult. Simply select the “not to publish” option on the application form. That’s it, not even additional fees. By checking a box, you can get your patent pending rights and continue to operate your startup in “stealth mode” until you are ready to announce and release your product on your terms.
Why Avoid the “Not Publish” Option?
If it’s this simple, why isn’t every patent filed with the nonpublication request? The honest answer is that it creates additional paperwork and risk for the attorney, particularly in the case of foreign filings.
One of the conditions the U.S. government puts on us is that if a patent is going to publish, the U.S. government wants to be first. Reasonable, right? However, the impact is that before filing a sister application in a foreign country, the nonpublication request has to be withdrawn.
This creates additional paperwork and a potential nightmare if the attorney forgets to backtrack.
While a nonpublication request doesn’t alleviate all of the concerns related to filing a patent, it should at least remove any fear that your publication will give your competition a heads-up on your competitive advantage.
Graphics credit: Tokyoship, Wikimedia