A recent change to the US patent law affects:
In many countries of the world, the patent office publishes each patent application regardless of whether the application ever becomes a granted or issued patent. The publication occurs eighteen months after the priority date. In most of these countries, infringement damages begin to accrue from publication.
Prior to the change in US patent law that is described in this update, the US Patent Office did not publish anything except issued patents. Damages were never available except on or after the date patent issuance.
The US Patent Office now publishes patent applications, and a published patent application starts the accrual of infringement damages. Anyone whose patent application is now pending, and which was pending on November 29, 2000, may request publication. This so-called "voluntary publication" merely requires a written request and payment of a fee (presently $300).
US patent applications filed on or after November 29, 2000 will be published by the US Patent Office unless the applicant files Form PTO/SB/35, certifying that the invention has not been and will not be the subject of a patent application filed in a country that publishes patent applications. (If the applicant later decides to file a patent application in a country that publishes patent applications, then the applicant must file Form PTO/SB/36 within 45 days, otherwise the US application will be automatically abandoned.) The publication happens eighteen months after the priority date.
Each publication (whether a "voluntary" publication for a pre-November 29, 2000 patent application, or a publication of an application filed on or after November 29, 2000) thus starts infringement damages running.
Whether or not to request voluntary publication. Each inventor having a pending patent application that was pending as of November 29, 2000 faces a decision whether or not to request voluntary publication. The voluntary publication offers, of course, the prospect of damage accrual from the date of publication. It also offers the potential drawback, as described in our 102(e) update, that certain types of prior art previously unavailable for citation against the pending application would become available. The applicant must also consider the $300 fee. Still another drawback for some inventors is that the secrecy of the patent application is also lost.
What to do when filing a new application. The inventor who files a new US application faces the decision whether or not to file Form PTO/SB/35 to prevent publication. Of course, the form may only be filed if the invention has not yet been the subject of a patent application in a country that publishes applications. The non-US inventor whose first filing was outside the US very likely thus cannot file Form PTO/SB/35. Filing the form prevents publication, which may be desirable for the inventor who wishes to preserve an unpatented invention in secrecy. But forgoing publication also gives up the possibility of pre-issuance damages.
This page is http://www.patents.com/pubs/volpub/ and is Copyright © 2001 by Oppedahl & Larson LLP