Filing a Nonpublication Request – Benefits and Requirements

Patent applications are published within eighteen (18) months of the priority date of the application. After publication, all information in the application becomes a public record available on the internet on the USPTO website or at the USPTO. This access could create a problem for an applicant who files an application that never issues into a patent.

A nonpublication request prevents an application from being published until the application issues as a granted patent. This is beneficial to an applicant because they are able to keep the information confidential if they don’t obtain a patent. If the applicant is torn between protecting the information as a trade secret or as a patent, and if a patent is ultimately not granted, the applicant can still keep the information as a trade secret.

An applicant for a patent application can file a nonpublication request if the subject of the invention has not been and will not be the subject of a foreign filing.

Under MPEP § 1122, the nonpublication request must:
1. be submitted with the application upon filing;
2. state in a conspicuous manner that the application not be published;
3. contain a certification that the invention disclosed in the application has not and will not be the subject of a foreign filed application (the applicant is under a duty to investigate to verify that this is true); and
4. be properly signed.

Form PTO/SB/35 is available on the USPTO website to use for this purpose.

If an applicant filed a nonpublication request and later decides they want to file foreign, the applicant may withdraw the nonpublication request by either: (1) rescinding the nonpublication request before filing foreign or (2) notifying the USPTO of a foreign filing no later than forty-five (45) days after filing foreign. Failure to notify the USPTO within forty-five (45) days will result in abandonment of the U.S. application.

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