Patent Application Publication Becomes Inventor’s ChoiceOctober 18, 2006

Prior to the American Inventors Protection Act of 1999, U.S. patent applications were kept secret throughout the process of going through the patent system. In 2001, the laws changed required applications be published 18 months after the original filing date. However, new rules have been introduced again. Now applicants may request that their application not be published even after the 18th month as long as the applicant assures the examiner that it does not intend to file corresponding foreign applications. This recent change in practice before the Patent and Trademark Office (PTO) begs the question, what function does publication serve? Additionally, why would any applicant want to publish their application if could continue to remain secret? To best answer these questions, the purposes of publication must be examined. The general answer is that publication of an application serves numerous functions and can often provide valuable benefits to applicants. First, if an applicant has filed or plans to file a foreign application, publication is mandatory. Therefore, even if an applicant is unsure whether they wish to file a foreign application, it is recommended that the application be published to ensure that they are able to file for a patent in a foreign country. Second, the publication of a patent application creates prior art world-wide. This results in a significant