What do you do if you have the next great idea but you are not sure if it is patentable?
If you file a patent application, won’t it be available for everyone to learn about your great idea for free?
Aren’t you better off keeping your great idea as a trade secret and not filing a patent application at all??
It turns out that this is one of the rare instances where you can have your cake and eat it, too. While patent applications become public by default, you can take steps to keep your invention secret during the patent application process. And if your patent application ultimately gets denied, you can still keep your great new idea from being disclosed publicly via the patent application process.
Issued Patents are in the Public Record
Most people know that an issued patent is a matter of public record. The United States and Trademark Patent Office (USPTO) maintains an on-line searchable database of issued patents, which is available to anyone with access to the internet. In addition to viewing the patent itself, the entire “file wrapper” can be viewed online by using the USPTO’s “Public PAIR” system. The “file wrapper” contains the entire file history of the patent, that is, the originally filed documents as well as all the subsequent documents filed by both the USPTO and patent applicant until patent issuance.
Patent Applications are Less Public
Patent applications, however, are not as readily available for public viewing. Provisional patent applications, for example, are not publically accessible at all. The only time a provisional application is accessible to the public is via an issued non-provisional patent issues that claims priority to the provisional application. If no issued patent ever claims priority to the provisional application, then the provisional application remains hidden from public view.
A non-provisional patent application is more accessible than a provisional application. By default, anyone can access a non-provisional patent application eighteen months after it is filed. The eighteen month default timeline can be affirmatively changed, though, by an applicant who requests either “early publication” or “non-publication.” If the patent applicant requests early publication, the patent application will be accessible by the public about four months after filing. An applicant may want early publication in order to be eligible for damages dating back to the publication date. If the applicant requests “non-publication” at the time of filing, the patent application and file wrapper stay hidden from the public until the patent issues. Keeping a patent secret makes sense for most applicants because in order to get damages back to the publication date, claims must be approved as filed, which is rare. The only other time application publication makes sense is if an applicant must publish a US patent application in order to seek foreign patent protection.
While keeping a patent application secret can benefit the applicant, it weakens patent searching. For example, a patent application filed today will most likely not be available to the public (patent searchers) for at least thirty months from filing if not more (i.e., one year for the provisional application, and eighteen months for the non-provisional application). As a result any patent search will be inherently missing the most recent – and possibly, most relevant – patent applications.
Protecting Inventors’ Personal Information
Finally, can an inventor’s personal information be kept secret during the patent process? Yes and no. The full name of the inventor, the city and state of the inventor’s residence, and the inventor’s mailing address all must be disclosed in the patent application and will be available to the public if the patent issues. However, the inventor’s mailing address need not be the inventor’s home address. A “mailing address” for patent purposes includes both post office boxes and business addresses. Thus an inventor’s home address, telephone number and email address can all be kept private.
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