Previously, the PTO held applications in confidence until a patent issued. Subject to certain exceptions, Section 122 of the Patent Act now requires publication of patent applications about 18 months after their effective filing date, or earlier if requested by the applicant. The PTO will not publish provisional applications, applications for design patents, abandoned applications or applications subject to a secrecy order. Additionally, an applicant may avoid publication by making a request upon filing, certifying that the disclosed invention will not be the subject of an application filed in a foreign country that requires publication 18 months after filing. The Patent Cooperation Treaty, Canada, Europe, Japan and many other countries require such publication.
Publication creates several new risks and opportunities.
First, publication destroys trade secrecy. Second, a published application may be cited as prior art based on the application's effective filing date, impeding later-filed applications for the same or closely similar invention. Third, armed with insight from published applications, businesses may now take steps to avoid infringement, long before the specter of liability looms large. Publication also opens the door to a new remedy against infringers. Under Section 154 of the Patent Act, as amended, a patent owner may obtain a reasonable royalty for infringing acts occurring from the date of publication to the date of issuance, subject to two prerequisites.