This past week I was working on a clearance search and reviewed a large number of US B1 documents in a tech space where prosecution normally takes many years to complete. This made me scratch my head and wonder if this is normal…

I’m reviewing US art in the USPC 700’s (CPC/IPC G06F+) which generally correspond to computer systems and am finding that approximately 10% of the issued patents in the last few years did not publish at 18 months.

This leads me to a few questions which I’m curious if anybody is able to answer relatively easily:

1) Are there Applicants known to request non-publication of their US applications at 18 months on a regular basis? From my “fast and focused” review, I see that NVidia is a regular user of this tactic with over 60% of their issued US patents in 2011-2014 being B1 documents. Are there others?

2) Is the prosecution history (filing/priority date to issue date) of these B1 documents approximately the same as the B2 documents in the same space? These applications seem a ripe opportunity for “submarining” similar to what used to occur in the pre-GATT days.

3) What negative is there for a US filer that only wants protection in the US if they request non-publication? Does the AIA change the equation at all? (Other than the extra fee to non-publish, I’m wondering why more applicants with only national interests don’t do this.)

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  1. Interesting question, Dominic.  I recall that when the AIPA came in, I was more concerned with the provisions for US applicants to redact their specifications so that any subject matter only filed in the US did not appear in their US-A document, but that it matched any non-US 18-month publications.  I think it was felt that the provision to request non-publication would only be taken up by smaller and/or individual applicants.

    You may be seeing something in G06F which is an artefact of filing policy.  If applicants have got used to the idea that software / business methods are more difficult to get granted in other jurisdictions, they may opt to file those cases in the US only.  Hence a greater proportion of this subject matter would be eligible for non-publication at 18 months, and your figures on B1/B2 ratio would be skewed compared to the totality of subject matter.

    Just a thought

    Stephen

  2. Stephen,

    Thanks for the reply. Just thought I'd follow up with a couple more names of filers I see pursuing this option:

    Google (60% of their G06F patents since Jan. 2011 are issuing as B1 rather than B2)
    Symantec (80% of their G06F patents since Jan. 2011 are issuing as B1 rather than B2)

    These are big, sophisticated filers choosing not to allow publication of applications at 18 months. Some of these might be because of prioritized examination or examiners cherry picking continuations, but I suspect that those two scenarios are a trivial volume.
     

  3. Hi Dominic and Stephen,

    This question intrigued me, so I did a little analysis.

    I basically ran this query ISD:[NOW-1YEAR to NOW] AND ANA_PEND:[548 to *] AND KCOD:B1 AND APD:[NOW-10YEARS to NOW]

    Here is the breakdown of the query:

    • US Patents granted in the last year to see who is doing it recently.
    • At least a 548 day pendency to eliminate fast track patents (548 days is 18 months) which would likely have been B1s regardless of the motivation of the applicant
    • B1 Kind Code
    • Filed in the last 10 years to get rid of odd exceptions with crazy big priority gaps (time between priority and file date)

    I get 14,249 US grants with these characteristics.  Here are the top 50 assignees (note: This list includes some (about 7%) algorithmically guessed assignee names).  Mostly high tech and government entities on the list.

    Dominic can you elaborate on your question of US interests only?  I don't understand the background information why this is a problem.  I am not an expert on EP and PCT filings.

    Unassigned2629
    GOOGLE INC804
    AMAZON TECH INC418
    MARVELL INT LTD407
    SYMANTEC CORP325
    PIONEER HI BRED INT300
    EMC CORP275
    SPRINT COMMUNICATIONS LP272
    WESTERN DIGITAL TECH INC198
    US NAVY189
    ADOBE SYSTEMS INC188
    ALTERA CORP174
    BOEING CO163
    SPRINT SPECTRUM LP147
    XILINX INC136
    ROCKWELL COLLINS INC131
    AT&T CORP125
    NVIDIA CORP125
    JUNIPER NETWORKS INC124
    NETWORK APPLIANCE INC106
    LOCKHEED MARTIN CORP105
    USAA101
    INTUIT INC99
    CADENCE DESIGN SYSTEMS95
    CISCO TECH INC84
    SANDIA CORP72
    CYPRESS SEMICONDUCTOR65
    HEWLETT PACKARD CO64
    APPLE INC63
    HRL LAB LLC62
    FLORIDA TURBINE TECH INC61
    MATHWORKS INC57
    US ARMY54
    BANK OF AMERICA53
    TREND MICRO INC53
    ORACLE CORP52
    QUALCOMM INC47
    MCAFEE INC45
    JPMORGAN CHASE BANK NA41
    AMKOR TECH INC40
    APPLIED MICRO CIRCUITS CORP39
    CELLCO PARTNERSHIP38
    SYNGENTA PARTICIPATIONS AG38
    AGRIGENETICS INC36
    RAYTHEON CO35
    US AIR FORCE35
    AMERICAN MEGATRENDS INC34
    IBM34
    NASA34
    UNIV SOUTH FLORIDA34
    F5 NETWORKS INC33

     

     

    1. Matt,

      Short version: If you submit a non-publication request with the USPTO you forgo patent protection just about everywhere else in the world.

      Long version with lots of indents and italics is MPEP Chapter 1100, Section 1122, 37 C.F.R. 1.213   Nonpublication request. — (a) (3) The request contains a 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 publication at eighteen months after filing.

      Btw, I hope the change from CobaltIP to AcclaimIP wasn't too taxing in time, money, or mental energy! Good to hear from you as always...


  4. I think I can provide some perspectives on question three, at least:

    If I am not mistaken, the publication of a patent application allows an assignee to put another organization on notice that a patent may grant. When, or if, the patent grants the assignee can seek damages from the moment the application published as opposed to when it granted. In some cases this could be a considerable amount of time, and money.

    See, for instance - http://intellectual-property.lawyers.com/patents/blogs/archives/8951-damages-for-patent-infringement-can-begin-when-the-application-is-published..html

    Which starts with:

    Typically, a non-provisional patent application is published eighteen (18) months after it is filed. If someone is infringing a patentee's invention, damages based on a reasonable royalty rate begin on the publication date.

    However a patentee can not file a lawsuit in court until the patent issues.

    The statute that governs the damages starting at the publication date, is 35 U.S.C. 154 - Contents and terms of patent; provisional rights.

    As for the submarine part, everyone still only gets 20 years from priority, barring term adjustments and if they can seek damages from the date of publication you would think they would want to publish as soon as possible.

    A possible conclusion might be that these companies have no current interest in asserting these patents, or using them outside the US and would like to keep them hidden as long as possible, especially if they think they might abandon them after an office action or two. This way they might still be able to keep them as a trade secret.

    Interesting question.

    Thanks, Tony

  5. Just trigger of another question (haven't done research, just posing the question here):

    So, if the applicant choose not to apply outside of US, can they later try to seek protection outside US? Let's say near the end of the 12-month priority deadline. Are USPTO capable enough to supervise these applications? (i.e. realize that these applications are in fact applied outside of US and claiming the US priority, and possible do something/anything about those applications, such as making them unenforceable?)

    Just assumptions, no empirical study yet.

    1. Here is the rest of the MPEP section I cited above (http://www.uspto.gov/web/offices/pac/mpep/s1122.html) which may answer your query. Jump down to the last part...

      ------------
      If the invention disclosed in an application filed under 35 U.S.C. 
      111(a) has not been and will not be the subject of a foreign or international application filed in another country, or under a multilateral international agreement, that requires publication of applications eighteen months after filing (e.g., a counterpart PCT application), applicants may request that the application filed under 35 U.S.C. 111(a) not be published by filing a nonpublication request under 37 CFR 1.213(a). The Office will not publish an application filed under 35 U.S.C. 111(a) with a nonpublication request in compliance with the following:

      • (A) The request for nonpublication under 37 CFR 1.213(a) must be submitted with the application upon filing (this is a statutory requirement and cannot be waived);
      • (B) The request for nonpublication must state in a conspicuous manner that the application is not to be published under 35 U.S.C. 122(b) (see Form PTO/SB/35 in MPEP § 1135);
      • (C) The request must contain a 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. Before making the certification, the person who signs the certification must make an actual inquiry to determine whether the certification under 35 U.S.C. 122(b)(2)(B)(i) and 37 CFR 1.213(a)(3) can be appropriately made (see I. REQUIREMENTS PRIOR TO FILING A NONPUBLICATION REQUEST, below); and
      • (D) The request is signed in compliance with 37 CFR 1.33(b).

      If applicant filed a nonpublication request and later decides to file a counterpart foreign or international application in another country, or under a multilateral agreement, that requires eighteen-month publication, applicant must either: (1) rescind the nonpublication request before filing such foreign or international application; or (2) notify the Office of such filing no later than 45 days after the filing date of the counterpart foreign or international application. See MPEP §§ 1123 and 1124.
      ------------

      Regarding enforcement, that's not the USPTO's issue. If an applicant wants invalid patents, more power to them, just keep giving your knowledge to the public and paying those maintenance fees please. If and when the patent is asserted or purchased, then the "oops" should be noticed.