Lifting The Veil Of Secrecy: 18-Month Publication Of Patent Applications In The U.S. Under The AIPA And Patent Risk Management

Originally Published in the E-Patent Litigation Reporter, Vol. 1, Issue 4, January 2001. Pages 1-3.

On November 29, 2000, the Domestic Publication of Foreign Filed Patent Applications Act of 1999 went into effect. This act is Subtitle E of the American Inventors Protection Act (AIPA), which was enacted as Public Law 106-113 on November 29, 1999. The AIPA including Subtitle E provides a number of new patent rules that include publication of U.S. patent applications after eighteen months. Publication of patents after eighteen months significantly affects patent procurement, management and enforcement practices in the U.S.

New routine publication of U.S. patent applications after 18-months

Before November 29, 2000, all patent applications and related papers filed in the U.S. were routinely held in secret until a patent issued. All patent applications filed in the U.S. on and after November 29, 2000, will be routinely published after eighteen months. Detailed information on the AIPA can be found on the United States Patent and Trademark (USPTO) web-set at (www.uspto.gov/web/offices/dcom/olia/aipa). The eighteen-month publication rule under the AIPA makes the U.S. patent system similar to the patent systems in most foreign countries, which have always routinely published patent applications eighteen months after filing.

Under the new rules, new utility patent applications, continuations, continuations-in-part and divisional applications filed under 37 C.F.R. 1.53(b), continuing applications filed under 37 C.F.R. 1.53(d), and foreign national stage applications filed under 37 U.S.C. 371 on or after November 29, 2000, will be published eighteen months after filing.

The cost of publication is recovered by charging a publication fee that is currently $300.00 after a notice of allowance is mailed for the patent application. If a patent application is abandoned, no application fee will be paid.

The new rules also allow for republication of published patent applications, voluntary publication of patent applications pending before November 29, 2000, and publication of a patent application earlier than eighteen months. The republication, voluntary, early or publication fee is currently $130.00. However, the USPTO will not honor requests that any publication occur on a specific date, two or more applications be published on the same day, or that only a subpart of an application be published.

If an applicant wants a patent application publication to reflect the application as amended during examination or with preliminary amendments, the applicant can submit a copy of the application as amended for republication. If the claims are amended multiple times during the examination of the application, the application may be republished multiple times.

The published patent applications will be eventually be available for electronic searching on USPTO search systems such as the USPTO web-site (www.uspto.gov). The USPTO search system will provide full text and image searching. However, the USPTO has indicated that it may not maintain paper copy collections of published applications for manual searching.

A published patent application will include a publication document...