Beginning on a Thursday in the middle of March of 2001, the USPTO will begin to publish utility and plant patent applications. Before November 29, 2000, utility and plant patent applications that were filed in the United States were required to be kept in confidence and a patent applicant had no enforceable patent rights before the issue date of a patent. With certain exceptions, utility and plant applications for patent filed on or after November 29, 2000, including international applications which are filed under 35 U.S.C. 363 on or after November 29, 2000 and are in compliance with 35 U.S.C. 371, shall be published promptly after the expiration of a period of eighteen months from the earliest domestic or foreign filing date of the application. In exchange for publication of a patent application, patentees may be able to obtain a reasonable royalty during the period beginning on the date of publication of the application by the USPTO or the date of publication under Patent Cooperation Treaty (PCT) of an international application designating the United States and ending on the date the patent is issued ("provisional rights"). See 35 U.S.C. 154(d).

Publication of utility and plant patent applications is required by the American Inventors Protection Act of 1999, Public Law 106-113. Final rules related to publication of patent applications, titled Changes to Implement Eighteen-Month Publication of Patent Applications, were published in the Federal Register on September 20, 2000 ( 65 Fed. Reg. 57024), and in the Official Gazette on October 10, 2000 (1239 Off. Gaz. Pat. Office 63).

An application shall not be published if an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication. The Office form for a non-publication request is PTO/SB/35. Countries that do not require publication at 18-months currently include Algeria, Belarus, Belgium, Iran, Iraq, Kazakhstan, Malaysia, Mongolia, Morocco, Philippines, Saudi Arabia, Syria, and Vietnam. There is no provision to accept this request after the filing date of the application, as the requirement for any request for non-publication to be made on filing is a statutory requirement.

An applicant may rescind a non-publication request at any time. The form to rescind a non-publication request is PTO/SB/36. An applicant who has made a non-publication request but who subsequently files an application directed to the invention disclosed in the application filed in the Office in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, must notify the Office of such filing within forty-five days after the date of the filing of such foreign or international application. An applicant's failure to timely provide such a notice to the Office will result in abandonment of the application (subject to revival if it is shown that the delay in submitting the notice was unintentional). If an applicant rescinds such a request or notifies the Office that an application was filed in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, the application is subject to eighteen-month publication. See 35 U.S.C. 122(b)(2)(B)(i)-(iv).

Additionally, an application will not be published if it is: (1) no longer pending; (2) subject to a secrecy order under 35 U.S.C. 181 or an application for which publication or disclosure would be detrimental to national security; (3) a provisional application under 35 U.S.C. 111(b); or (4) an application for a design patent under 35 U.S.C. chapter 16. See 35 U.S.C. 122(b)(2)(A) and (d). Further, a regular plant/utility application filed prior to November 29, 2000 will only be published if applicant requests publication. See 37 CFR 1.221(a). Because a non-publication request must be made on filing an application, applicants who file a patent application, without a non-publication request, and want to avoid publication may wish to consider expressly abandoning the application under 37 CFR 1.138(c), and filing a continuation with a non-publication request. This new rule permits an applicant to petition for express abandonment to avoid publication, and that the express abandonment will not be recognized if the request is received too late to avoid publication. Applicant should ensure that the petition is before the appropriate deciding official at least four weeks before the publication date of the application by mailing petitions under 37 CFR 1.138(c) to BOX PGPUB- ABD.

The cost of any publication required by 35 U.S.C. 122(b) will be required with the Notice of Allowance and Issue Fee Due, unless applicant requests early publication. If an application becomes abandoned and does not issue as a patent, no publication fee is required. The fee is currently $300, and no small entity discount is available. If applicant requests early publication, then the publication fee will be required when early publication is requested. See 37 CFR 1.219.

Applicants will be informed of the publication date assigned to the application on the filing receipt. Patent application publications will have a similar appearance to a U.S. patent. Patent application publications will be assigned a unique number, followed by a capital A, and a number. Before January 2, 2001, patents were issued with "A1" following the patent number, but since the A designation is the international standard for the first publication (check term), beginning on January 2, 2001, patents have been issued with "B1" following the patent number. Patent application publications will be classified according to the U.S. classification and the International Patent classification systems and included in electronic databases of the USPTO so that they are searchable in the same manner as patents. Copies of patent application publications will not be mailed to applicant, but will be freely downloadable from the USPTO web site (www.uspto.gov). In addition, upon publication, a member of the public will be able to obtain a copy of the file wrapper of a published application. 37 CFR 1.14(c)(1)(ii).

The patent application publication will generally be composed from the patent application papers as originally filed and will only include a preliminary amendment if the preliminary amendment is necessary to make the application complete (e.g., the amendment includes claims and the other application papers do not include claims). If a continued prosecution application (CPA) is filed on or after November 29, 2000, the application that will be published will be the first-filed application in the CPA file jacket, unless applicant files a replacement copy of the specification (including claims) and drawings through the Electronic Filing System (EFS). Since amendments other than those required by OIPE will only be included in a patent application if a copy of the amended application is submitted through the EFS, applicants should review applications before filing to ensure that the originally-filed application is suitable for publication. For further information about EFS see the Electronic Business Center on the USPTO homepage (www.uspto.gov). One exception to the general provision that amendments will not be included unless required by OIPE is drawings filed within a certain time period, with a $130.00 fee, and mailed to Box PGPUB DRAWINGS will be included in the patent application publication.

Publication of the patent application publication may be delayed if the application papers submitted on the filing date of the application do not include the content needed (e.g., an abstract or an executed oath or declaration) or the application papers or drawings are not of sufficient quality to be used to create a patent application publication. In such a situation, the Office of Initial Patent Examination (OIPE) will issue a notice requiring that the applicant submit the needed application content or application papers or drawings of sufficient quality for use in creating a patent application publication. The applicant's reply to that notice (application papers and drawings needed to create the patent application publication) will then used for composing the patent application publication.

Publication of patent applications is an important change to U.S. patent law. Most other countries publish patent applications, but those publications are often not in English. Once patent applications are published in the United States, inventors will be able to see the technology sought to be patented by others in a publication that is in the English language, at a much earlier time than the document would be otherwise available. In addition, patent application publications may be used as prior art under 35 U.S.C. 102(e) in applications filed on or after November 29, 2000, and in applications that filed before November 29, 2000 that are voluntarily published under 35 U.S.C. 122(b). Applicants will be able to defeat the patents of others without recourse to the harsh and comparatively more expensive provisions of a statutory invention registration (35 U.S.C. 157), and ensure that inventions that they choose not to patent are not patented by others.