Bad Advice – Non-publication Requests for Patents
How incompetent patent attorneys hide their work product from public view.
Occasionally, I run into patents where the patent attorney talks the client into a non-publication request.
This is always a bad thing.
Non-publication requests keep your patent secret until the patent has been examined. The patent is confidential throughout the examination process, and only on the day of issue does it pop up into the public record.
During the examination process, nobody even knows that you filed the application. Suddenly, it pops up out of nowhere. These used to be called “submarine patents.”
Submarine Patents
The submarine patent strategy was an inherent part of the patent system before 1995, when the publication system began. Back in the day, every patent application was secret until it issued.
In order to harmonize with the Europeans, the US established a similar publication requirement that published the application at 18 months after the filing date.
The submarine strategy was used to hide what a company was developing, but it was also exploited by the early patent trolls (by the way, “patent troll” is always used in this blog as a name of honor and respect) to target specific infringers.
The patent owners would keep continuation applications open for very long periods of time, sometimes 30 years or longer. They would target an infringer, draft claims that directly read on the infringer’s product, and focus on getting those claims allowed.
When the patent issued, it popped up out of nowhere with clear, unmistakable claims that were infringed by a large company. The patent owner would negotiate a quick settlement for a license agreement.
As you can guess, large companies were furious that innovative patent owners would do this. Under the guise of “harmonization,” the patent laws were changed in 1995. This brought many changes, including provisional patent applications, patent publications, and the change that patents would have a guaranteed life of 17 from the issue date or 20 years from the earliest filing date.
Injunctions Used to Play a Big Role in Patent Litigation.
Before the eBay decision, patent litigation worked like this: a patent owner would go to court (in their home town) and show a judge that a Bad Infringer more likely than not infringed their patent.
The judge would issue an injunction very quickly and shut down the Bad Infringer from selling their product immediately. The injunction would be in place while the case plodded through the courts.
If the product was important to the Bad Infringer, they would quickly get into negotiations with the patent owner and come to a license agreement. Once the settlement was made, the judge would dismiss the case and lift the injunction. These negotiations happened quickly, sometimes within days of the injunction.
Part of the game was for the Bad Infringer to sue to invalidate the patent. They could not do that willy-nilly, they needed a reason to get into court.
If you sent a cease and desist letter to the Bad Infringer and it was perceived as a threat, they would have probable cause to invalidate the patent. The game was for the Bad Infringer to quickly run to their hometown court and sue the patent owner. The patent owner would then have to travel to the Bad Infringer’s location.
This is why the cease and desist letters are always written very cleverly to dance around the fact that the Bad Infringer is, indeed, infringing. If you come out and say that straightaway, the Bad Infringer can make life difficult.
Note that injunctions were all but eliminated nearly 20 years ago with eBay vs MercExchange. Now, the Bad Infringer has every incentive to delay, delay, and delay again. It is commonplace for patent lawsuits against giant companies to last 5 years or longer before a settlement.
The “Submarine” Strategy for Startup Companies.
In today’s patent climate where injunctions are next to impossible to get after eBay, the Submarine Strategy is not nearly as useful.
Back in the day with the constant threat of injunctions, merely thinking of suing someone was ammunition to counter-sue for invalidity. Without injunctions, that threat is almost non-existent.
I prefer early publication over non-publication for startup companies.
Why Early Publication is Good for Startup Companies.
Early publication is the USPTO’s program to publish the patent application immediately (typically a couple months after filing).
Early publication is good for investors, as they see “something” that the company is doing.
Early publication is good for negotiation with competitors, as it puts them on notice for any infringement on the day of publication. These rights, called “provisional rights,” allow a patent owner to seek royalties based on the day of publication, not just the day of issue.
Early publication is good for acquisition. Pending applications, while not as good as issued patents, add to the value of a startup company. Having a few extra patents published will increase the company’s perceived value for an acquiring company.
When to Use Non-Publication Requests.
Non-publication requests can only be filed for US-only applications. If you file internationally (or plan to do so), the foreign countries may not recognize the priority of the US application if it is not published on or before the 18 month cycle.
If you are utterly embarrassed about the invention or the patent quality, you should use a non-publication request. This will hide your patent attorney’s incompetence or your own belief about the problems in the invention.
I have only seen non-publication requests being suggested by some of the most incompetent patent attorneys. When you look at their work product, it is clear why they do not want it available for public inspection. Patents tend to be extraordinarily poorly written, badly prosecuted, and of the worst quality.
The key takeaway: if your patent attorney suggests doing a non-publication request, tell them thank you and walk down the street to find another patent attorney who believes in the quality of their work product.