One Year Grace Period
An inventor has a grace period of one year (in the United States) in which to file a patent application. During that one year period, an inventor may place his or her invention in public use or on sale without losing his or her right to apply for U.S. patent protection.
All U.S. applications filed after November 29, 2000, will be published at eighteen (18) months from the filing date (or priority date if earlier). Because of this rule, applications now filed are being held to higher standard with regard to format, completeness, and legibility. One benefit of the publication rule is that the applicant will have “provisional rights” with regard to the published claims. This means that if the claims which eventually issue in the patent are “substantially identical” to those published, then additional damages may possibly be obtained against certain types of infringers for the time period between publication and issuance.
The main reason for not wanting to publish the application is that the invention will be disclosed and so cannot be maintained as a trade secret.
After publication, the entire contents of the application, other papers and responses filed by the Applicant, and Office Actions by the Examiner will be made available to third parties. Also, third parties can then submit patents and other materials which they believe are relevant to the patentability of the application. While this latter issue sounds ominous, in fact it may be beneficial to the applicant since any resulting patent will be stronger having been issued over additional closely related patents and materials.
For unpublished applications, no information concerning the application is given to anyone without the permission of the applicant except in special limited circumstances. If the applicant decides at some point not to continue the attempt to obtain a patent, the contents of the application will forever be kept in confidence by the Patent Office. It is only after a patent is actually issued that the information contained in the application is made public.
For cases filed after November 29, 2000, there is still an opportunity to avoid publication. This requires certification by the applicant that the U.S. Application will not be foreign filed. An applicant can change his or her mind, and file corresponding foreign applications, but the U.S. Patent Office must immediately be advised of this change. If the U.S. Patent Office is not advised within the prescribed time, the Application will be considered abandoned.