Evidence Based Prosecution III: Publishing Patent Applications

In 2001, the PTO began publishing patent applications that had been filed eighteen months prior.  Prior to that change, essentially all U.S. applications had been kept secret throughout prosecution.

Under the new rule an application will publish after eighteen months unless the applicant explicitly requests nonpublication and promises that it does not intend to file any corresponding foreign applications.

To take a look at how applicants are responding to to the change, I pulled up a random sample* of 1% of all published applications (12,000+ sample size) then created a histograph based on serial number. The graph below shows the results.


The applications around the beginning of Series 10 (10/000,000) were filed around the end of 2001 while those at the end of Series 10 were filed in the later half of 2004. It appears that the major dip at 10/600,000 is a data anomaly, although I have not yet figured out why it is there.  This graph cannot be seen as a real timeline because some serial number blocks are reserved for certain application types.

There are several reasons for publishing your application:

  • Law: If you plan to file file a foreign application (or already have filed) then you must allow the application to publish.
  • Transaction Costs: Publication avoids the problem of later having to think about whether you are going to file foreign.
  • Signaling: Publication can provide some signaling — i.e., to let everyone know how strong your technology is so that they don’t step on your toes. This is also a credible showing to investors.
  • Rights: Publication can provide provisional rights if the claims that issue are “substantially identical” to those that are published and if actual notice is given to the infringer.
  • Blocking: Publication creates world-wide prior art.


  • *The data was actually collected in six random samples — Applications published in 2001, 2002, . . . , 2006.

20 thoughts on “Evidence Based Prosecution III: Publishing Patent Applications

  1. 20

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  2. 19

    I don’t know who is writing the negative things about Ron Riley but have am a small inventor and I have found him to be informative and VERY reliable. He could use donations but he has never pressured me and has been very generous with his time.

    I have some valuable patents pending and accordingly have checked him and his organizations out with KNOWN REPUTABLE SOURCES AND HE CHECKS OUT AOK

    I would suggest anybody do their own due diligence on Ron and form their own opinion.

    As to his critics, you might want to be more careful. There are such things as liable laws.

    A. Good Citizen

  3. 18

    Ronald J. Riley wants you to contribute to his organizations and websites. He’ll be happy to take credit cards!

    Who is Ronald J. Riley? He is a self-proclaimed “expert” on patent law without any university training in the legalities of this field. He is not a Ph.D. on intellectual property rights and is not part of any effective lobbying group that could seriously lead to change. Ronald J. Riley has created several inventor related organizations with several websites and has appointed himself “President” and “Director” of these little known groups. If anyone is seriously looking for legal advice on patent law or the USPTO, you should consult with a qualified legal professional. Ronald J. Riley may have read a couple of books about patent law, but he is not an attorney or anyone to be taken seriously on these matters.

    The question is: how much money has he collected from unsuspecting “inventors” who believe what he says? Riley has never licensed a patent, has never made a dime in royalties and his organizations offer no financial assistance to inventors who truly have cutting edge intellectual property. Take a look at Mr. Riley’s checkered past:

    link to ronaldjriley.blogspot.com

  4. 17

    Mr Riley, I am British, and used to think the the UK National Health Service was streets ahead of anything else in the world. after all, that’s what I had always been told, and always had read. Then I came 15 years ago to live in Germany. Now I can see more clearly what are the NHS’s best features, and which are not so hot. The American public doesn’t care what people in other countries think, you write. I already thought so, but thanks for reminding me.

  5. 16

    link to patentlyo.com

    “Good answer James Hill but for me, from Europe, there are more points to make, against the scenario imagined by Mr Riley which for me, frankly, seems pure wishful thinking fantasy.”

    With all due respect I and pretty much the rest of the American inventor community do not care what other countries think about our patent system. Every country maneuvers for advantage and attempts by other counties to alter our incredibly effective patent system are bald faced attempts to change that system for their advantage.

    Actually the scenario is very much reality for individual and small business inventors. When an inventor produces something of value patent pirates do try to take it without compensation. The problem they face today is that they have to deal with inventors with greater resources and much more business experience who are allied with law firms or patent enforcement entities with similar characteristics. We share tactical information about companies in our community. We know which companies are disreputable and we know how they will conduct themselves.

    We are even focusing think tanks of successful inventors on companies who are known bad players. The results of their brainstorming will be used to adjust attitudes of those companies. The fight is changing from one of pure defense to offense. Crooked companies will be paying dearly for their conduct.

    It is our hope that the time will come when those companies realize that a symbiotic relationship is superior to their current parasitic approach.

    You say “He’s right that public policy on patent matters is different in civil law countries (mainland Europe, Asia) than in common law countries, but wrong that this public policy, as between the little guy and the corporate juggernaut, is biased.” I submit that you simply do not know what you are talking about. So called patent reform has been driven by and for the interest of those companies whose business model is to pirate inventors work. After decades of getting away with horrific conduct those companies are getting their tails kicked by an increasingly organized inventor community and this legislation is an attempt to shift the balance of power to the pirates’ advantage.

    America’s patent system is hands down superior to every other system in the world. It allows upstart startups to take on and win fights against vested interests. It serves America’s needs very well and we intend on seeing that it continues to serve our interests. The patent system is the fuel of our economy.

    Ronald J Riley, President
    Professional Inventors Alliance
    Change “at” to @
    RJR Direct # (202) 318-1595

  6. 15

    Re: Mike Brown, 03 Oct: The ending comment regarding methodology appears well taken. I suspect that the reserved blocks of application numbers is the greater flaw, since there are at most a negligible number of applications which issue before they are published — issuance in less than 18 months is awfully rare, these days.

    Re: Ronald J. Riley, 30 Sep:

    “One reason that so many independent & small business inventors pending applications are being published is that most practioners are not informing the inventor that they can opt out. I hear again and again from inventors who are really upset when their patent applications are published. They had no idea that their patents were going to be published.”

    It is highly (extremely) unlikely that “most” practitioners are failing to tell individual inventors about publication of their applications. To the contrary, in 25 years of private practice I’ve never heard of a practitioner who failed to inform the client regarding publication. I have, however, met a number of individual inventors who have failed to pay attention to — to follow — their attorney’s advice and information, both oral *and* written.

  7. 14


    M.P.E.P. § 1122 expressly states, “A nonpublication request [is] not appropriate if the applicant has not yet made a decision whether to file a counterpart application in a foreign country, or under a multilateral international agreement, that requires publication of applications at eighteen months after filing.” Admittedly, this language is not in the statutory provision or the rule governing nonpublication. At the very least, however, it is the USPTO’s interpretation of what it means to certify, as required by statute, that a counterpart foreign or PCT application “will not” be filed. The scienter would be that the applicant or his or her attorney certified that a corresponding foreign or PCT application “will not” be filed when the certifying person knew that the applicant had not yet made up his or her mind. This is different, in my view, from a case where an applicant “knows” at the time of U.S. filing that he or she is not going to foreign file, but then has a change of mind sometime after filing.

    There are, however, no reported cases discussing this issue according to the quick search I performed.

  8. 13


    I respectfully disagree that filing a non-publication request when the applicant is undecided can be a basis for inequitable conduct. Both the statute and the rule require the decision to be made at the filing of the application. Neither the statute nor the rule require present certainty concerning future action, as you can see from sec. 122(b)(2)(B)(ii) and Rule 213(b).

    As far as I’m concerned, you could only raise a potentially successful charge of inequitable conduct if the applicant had a present intent to file such a foreign application when making the certification (or had filed such an application already). Inequitable conduct is a species of fraud, and fraud requires scienter. Uncertainty concerning a state of the world or ultimate intent is not commonly the type of knowing misrepresentation that qualifies as scienter.

  9. 12

    I’m a bit confused about the methodology for this analysis – it seems rather like the telephone survey which found that 100% of respondents had telephones. Are you assuming that a serial number which didn’t appear in a published application was under a nonpub request? That may, or may not, be true – as noted above, there are whole blocks of reserved numbers, and an application which is issued (x months) before publication will not appear as a published application, so applications in faster-responding technologies will be skewed toward looking like they had nonpub requests.

    It seems to me that a more accurate assessment would be to look at issued patents over the last five years and see how many records have publication numbers vs. those which don’t.

  10. 11

    The data anomaly results from the reservation of series 10 application numbers in that range to national stage applications, which numbers are still being assigned (even though series 11 numbers have been used for new regular applications for some time).

  11. 10

    I have in the past reasoned that it is better for an individual inventor to publish and for a decently sized company not to publish (assuming there is no intent to foreign file). The company will likely have established competitors, so it has an interest in keeping its R&D activities secret for as long as possible. With an individual inventor, knowledge about the patent application can lead to offers to purchase or license as mentioned above, which may be satisfactory financial award for the inventor.

    Be careful when you fill out a nonpublication request. M.P.E.P. 1122 is quite strict on the circumstances when one is appropriate. The practitioner must perform an actual inquiry that determines that the applicant’s intent at the time of filing the U.S. application is not to file a corresponding application in a publishing jurisdiction. Nonpublication requests are not proper if the applicant has not yet made up his or her mind on whether to foreign file. The past practices of the applicant with respect to foreign filing also cannot form the basis for a nonpublication request. I’m not completely sure about the materiality prong, but it seems to me that any time you file a nonpublication request, you invite investigation into inequitable conduct. Does anyone know of any cases on this issue?

  12. 9

    A 35 USC 135(b)(2)bar is also triggered one year from the application pubication, protecting small inventors and others from being dragged into a costly, and very often claim-losing, interference.

  13. 8

    Here’s MaxDrei again, with answers to the two mails immediately above:

    Inventors that come to mind are 1) James Dyson, who invented the DYSON vacuum cleaner, 2) Ron Hickman, who invented the Black & Decker WORKMATE 3) Mandy Haberman, inventor of the commercially very successful, and instantly copied, ANYWAYUPCUP and 4)Mr Pavel, with his early filing on a WALKMAN idea, who took on Sony in the English patents county court and nearly won. Pavel’s the only one of the four that didn’t win, but the point is that his patent attorney was so sure his client would win that he more or less bet his own farm on the endeavour. These are British cases. Any German readers could come up with a whole bunch more, because patent litigation in Germany costs a small fraction of what it costs in London.

    National security: I suspect your correspondent (and any patent advisor he has) is wholly ignorant of the whole subject. Suggest he starts with the NATO Agreement on the Mutual Safeguarding of Inventions of Defence Interest ie “secret” patent applications, when read in the context of the “national security” provisions of the patent statute of any NATO member country.

  14. 7

    I agree with the author except in one type of filing,,,, national security.

    I have filed a patent I never want to be published as I dont want other countries knowing the technology.

    Certain patents should be protected from publishing until the US government says they have no threat to national security.

    ie., something that would put another country on equal or advanced footing just by knowing your patent idea.

    I dont think its too much to ask for American inventors to think of your country first before you publish.

    The business will always be their if the idea is really great.

  15. 6

    Max, On that point, can you give us one or two examples of European individual inventors who have successfully prosecuted and enforced their patents in Europe?

  16. 5

    Mr Riley and I relied simultaneously. I leave it to US readers to comment on Mr Riley’s ideas about the relative cost of litigation within and without USA. He’s right that public policy on patent matters is different in civil law countries (mainland Europe, Asia) than in common law countries, but wrong that this public policy, as between the little guy and the corporate juggernaut, is biassed. It is a universal human trait to have a soft spot for the lovable little guy. To play successfully on an alien playing field, you have immediately to grasp and follow the different Rules of the Game. Open-minded players fare better.

  17. 4

    Good answer James Hill but for me, from Europe, there are more points to make, against the scenario imagined by Mr Riley which for me, frankly, seems pure wishful thinking fantasy.

    Serious innovating companies are running their own R&D forward, and are not hanging around waiting for stimulus from the publications of private inventors. The serious companies are doing clearance studies. Their top management forbids product managers to proceed with new products that infringe. In this real world, hostile A publications of broad unexamined claims, 18 months after priority date, which cannot immediately be dismissed as hopelessly lacking in validity, are a real headache. The “quantum of damages” meter is running already. How many times do you think a US medical devices company beats a path to the door of a German medical doctor, to buy his(not often her) A published patent application before the competition does??

    Provided the private inventor defines correctly in his/her claim what the invention is, and attaches an enabling disclosure, the boot on his/her foot is bigger when it is an 18 month published boot. The amount the VC boys, other tech investors, contingency fee lawyers and other trolls are willing to invest in your case (taking on the corporate juggernaut) depends on the size of the boot on your foot, no? In the real world, 18 month publication helps the little US or German inventor more than the Japanese corporate juggernaut.

  18. 3

    link to patentlyo.com

    The majority of independent inventors are better off to not pursue coverage outside the US. While there are exceptions to this they are rare. Broad coverage worldwide can cost twenty fold or more than what a US only patent costs. Enforcement outside the US is even more costly and much more difficult than in the US.

    Generally an inventor is better off spending the money on commercialization in the US.

    One of the reasons that coverage outside the US is not cost effective is that their patent systems and laws are in large part designed to favor big companies. In fact those big companies are doing their best to cut America’s patent system off at the knees so that the American system no longer stands taller and prouder than the rest. Their efforts to do this are shrouded in “patent fairness”.

    So called patent reform is not really reform but rather a set of tools designed by and for patent pirates, especially by the group known as the Coalition for Patent Fairness, otherwise and better known as the Coalition for Patent Piracy.

    If they succeeds in passing their legislative agenda it will not be practical for contingency litigators or patent enforcement businesses to pursue most cases. As it stands now the high cost of patent litigation means that patent pirates can steal invention of lesser value with impunity. Their idea of patent fairness is a system where they can take American inventions to low wage countries without paying the inventors a dime.

    The effects of patent pirates legislative agenda are:

    1) Increases the costs of small entity patent holders, often by at least an order of magnitude.

    2) Shifts costs from large corporate infringers to the small entity.

    3) Opens new causes for large entities to litigate.

    4) Opens our patent system to a multitude of patent system abuses common in Japan which very much favors big companies.

    5) Delays the possibility of start-ups obtaining investment capital by effectively increasing pendency.

    6) Increases the power and potential abuse of such power by the USPTO which has become increasingly politicized.

    7) Lowers the potential recovery for a patentee by at least one to two orders of magnitude.

    8) It will not decrease the role of attorneys or litigation, but rather will increase their role and legal expenses in a multitude of ways.

    9) Will lead to much higher filing rates for patents which will further bog down the USPTO.


    The Professional Inventors Alliance USA was created more than a decade ago to protect American invention and encourage innovation. American inventors saw a need to track congressional legislation and federal policy that impacts independent inventors, small and medium-sized businesses and colleges and universities. The Alliance is the premiere organization in the nation, providing independent inventors a united voice in order to improve public policy.

    The Alliance provides legislative counsel, congressional updates and strategy development to its members through a number of vehicles. Additionally, through its speaker’s bureau, Alliance members have an opportunity to provide expert opinion to many of the nation’s top-tier business, technology and mainstream media organizations. Over the years its members have testified before Congress, offered counsel to key Senate and House committee members, and successfully pushed legislation to protect America’s independent inventors.

    Since its inception, the Alliance has grown into one of the most vocal advocates for America’s patent system.

    Examples of areas of our expertise include David Vs. Goliath patent litigation, patent reform, and we have a unique view of the companies comprising the “Coalition for Patent Piracy”.

    Please call for a different perspective.

    Ronald J Riley, President
    Professional Inventors Alliance
    Change “at” to @
    RJR Direct # (202) 318-1595

  19. 2

    Ronald said, “The right to sue conveyed by early publication is a hollow right ….”

    Publication does not confer a right to sue, but rather a right to damages that begin earlier, upon actual notice of the publication to the infringer. One still may sue only after issuance of the patent.

    Although Ronald makes a good point, all is not lost for a startup that publishes its applications. If an infringer makes a lot of money by stealing an invention well-claimed in a published application, and substantially identical claims issue in the corresponding patent, many firms will take such a plaintiff’s infringement case on a contingency-fee basis, making enforcement of the patent affordable. And the infringer will owe damages for a period (between notice and issuance) during which the startup presumably had no cash flow, resulting in a nice “bonus” for the company.

    Also, if the application does not publish, the startup loses an earlier opportunity to create inventive-step (obviousness) prior art outside the U.S.; without publication, the application is prior art for novelty only in foreign countries until issuance. And in the U.S., the nonpublished application is prior art under 102(e), which can be sworn behind, whereas if it publishes, it becomes 102(b) — hard to get around — one year later.

  20. 1

    One reason that so many independent & small business inventors pending applications are being published is that most practioners are not informing the inventor that they can opt out. I hear again and again from inventors who are really upset when their patent applications are published. They had no idea that their patents were going to be published.

    Publication costs an inventor hundreds of dollars which is better spent elsewhere and it gives patent pirates much more time to try and work around the invention. It makes it easier for disreputable companies to manufacture evidence of prior art. It allows them time to build a fence of nuisance patents around the inventor’s core technology. This has long been the tactic of Japanese companies. When an inventor’s patent is published long before they actually have rights to the invention disreputable deep pocketed companies can make enough money from stealing the invention that they can bury the inventor in litigation and still have a handsome profit.

    While large business has little to lose from early publication the same is not true for startup companies. For a startup to survive they need to have secrecy until their patent rights are granted. They need to hit the market running and in so doing they have a head start. It is the profit from sales of product which gives the startup the cash flow they need to defend their patents. The right to sue conveyed by early publication is a hollow right in the absence of cash flow to pay to defend the rights.

    Ronald J Riley, President
    Professional Inventors Alliance

    Ronald J Riley, Exec. Dir.
    InventorEd, Inc.

    Change “at” to @
    RJR Direct # (202) 318-1595

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