Tuesday, September 1, 2009

Arguments Against Pre-Grant Publication

Some opponents to pre-grant publication have argued that any disclosure of a patent application prior to the grant of the patent is unfair. Specifically, it has been argued that pre-grant publication unfairly destroys the secrecy of an invention and therefore deprives the inventor of his/her trade secret rights should the application fail to issue to patent. The publication of a patent application is tantamount to the publication by a government of the confidential information of the patent applicant. While the patent applicant agrees to this when an application is filed, the patent applicant is provide with the choice of filing for patent protection and agreeing to pre-grant publication or not filing a patent application and risk loss of control of a new technology which can not be maintained confidential on a long term basis. The thoughts of the patent law revision committee in the Netherlands in the 1950’s balanced this by suggesting that publication occur after the search is received. Once the search was considered, a patent applicant would have time to determine if the patent process should be continued or abandoned (in which case a patent application could be withdrawn from publication).

It has been argued that the 18 month time period is a disadvantage to small inventors because they often need a longer secrecy period for "consolidation of the invention idea and the completion of its possible applications". For example, early publication of an application can allow "patent flooding" by competitors, especially large corporations. Patent flooding is a practice where competitors attempt to limit the scope of a patent application by filing several subsequent applications "around" the claims of the original. As a result of pre-grant publication, small entities may not be able to protect themselves from "secondary products" created by large competitors from the teaching in a published application of a small entity. Thus a large competitor may be able to work off of the research and development of a small company and be first to launch new products.

Other arguments advance in opposition to 18 month pre-grant publication include claims that submarine patents are no longer a significant problem in modern patent systems, and that international harmonization merely for its own sake is not necessarily a good thing. - FICPI newsletter

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