Written by attorney Bruce E. Burdick

Will I Lose Anything By Requesting Non-Publication of a Patent Application?

YES, filing a Non-Publication Request requires you to state you will not seek foreign patent protection if you file a non-provisional. That is almost never a smart thing to do. By doing that you will also lose the right to retroactive royalties should your patent claims that would have been published not be published but yet infringed prior to issuance. By not publishing you may miss an opportunity to bar others from obtaining foreign patents on your invention. That might cost you a million dollars in the right case, although more likely will cost you nothing, particularly if you don't get a patent attorney, since without one you are virtually certain to end up with nothing of any value. You need a patent attorney to help you determine that. You obviously do not understand the advantage of a provisional patent application in this situation, which is never published unless and until a non-provisional is filed based on that provisional. Your question shows you are a novice that has no business making this strategic decision as you do not even understand the most basic patent law principles. You need a registered patent attorney to guide you so you don't screw up and lose valuable patent rights, particularly those overseas and even more worrisome, those here in the US.

Please note that it is a violation of USPTO regulations to file a Request for NonPublication if you have already filed a foreign counterpart to the US patent application. See MPEP 1122

Additional resources provided by the author

Free Q&A with lawyers in your area

Can’t find what you’re looking for?

Post a free question on our public forum.

Ask a Question

- or -

Search for lawyers by reviews and ratings.

Find a Lawyer