17.2 Publication, Preissuance Submissions & Protests

17.2 Publication, Preissuance Submissions & Protests

Eighteen-month publication

Under 35 U.S.C. § 122(b), most utility and plant applications are published promptly after 18 months from the earliest filing date for which benefit is sought, unless an exception applies. Publication makes the application file broadly accessible and creates prior-art consequences under the applicable statute. Design applications are not published under this provision.

An applicant may request earlier publication. The applicant must also keep bibliographic and priority information accurate because the projected publication date is calculated from the earliest claimed benefit. Publication of an application does not mean its claims are allowed and does not itself create a presumption of validity.

Section 154(d) may provide a reasonable royalty for certain infringing activity between publication and patent issuance, but only after the patent issues and only when the accused party had actual notice and the issued claims are substantially identical to the published claims. An English-language PCT publication can serve the publication function when the statutory requirements are met. “Published, therefore enforceable” is an incorrect shortcut.

Nonpublication requests

An applicant may request nonpublication only by making the statutory certification that the invention disclosed in the application has not been and will not be the subject of an application filed in another country or under a multilateral international agreement that requires eighteen-month publication. The request must be made upon filing of the U.S. application; it is not an election to make after ordinary prosecution has begun.

The applicant may rescind a nonpublication request at any time. More importantly, if the applicant later files abroad in a system requiring publication, the applicant must notify the USPTO within 45 days after the foreign filing. Failure to provide the required notice causes abandonment unless the application is revived on the required unintentional-delay showing. A foreign filing limited to subject matter not disclosed in the U.S. application requires careful comparison; use the statutory certification facts rather than assuming that every foreign filing has the same consequence.

Third-party preissuance submissions

Section 122(e) and Rule 1.290 let a third party submit patents, published patent applications, or other printed publications of potential relevance. The submission must include:

• a list identifying each item;
• a concise description of the asserted relevance of each item;
• a legible copy unless an exception applies to a U.S. patent or published application;
• any needed English translation; and
• the fee or a proper first-and-only small-submission fee statement.

Timing is the central test. The submission must be made before a notice of allowance and before the later of (1) six months after publication of the application or (2) the date of the first rejection under § 132. If the first rejection occurs early, the six-month publication date may be later; if the first rejection occurs later, that rejection date may control. But allowance always closes the window.

The concise description should point the examiner to relevant portions and explain their bearing without becoming an improper participation in prosecution. The submitter need not serve the applicant in the manner required for an AIA trial petition, and the third party does not acquire a right to interview the examiner or reply to the applicant.

Protests

A protest under Rule 1.291 is a different mechanism. It may identify prior art or facts adverse to patentability, but ordinarily it must be filed before the application is published or before a notice of allowance, whichever occurs first. Once the application is published, a protest requires the applicant’s written consent. This protects the ex parte nature of examination; the protester does not become a party.

A compliant protest identifies the application, supplies an information list and copies, gives a concise explanation of relevance, and includes the required service statement or other rule-specific papers. If the application has already published and consent is unavailable, use § 122(e) if its independent timing and document limitations are satisfied—do not relabel a late protest.

Comparison table

Exam method

First identify whether the actor is the applicant or a third party. Then identify whether the application is published and whether allowance or first rejection has occurred. Finally classify the material: a printed publication fits § 122(e), while other evidence may fit a timely protest. Those three facts resolve most publication-submission scenarios.