Arguments Favoring Pre-Grant Publication

A major advantage of pre-grant publication is that it reduces uncertainties involved in product or process clearance searches. If a patent application is not published until it issues to patent, then a company that proposes to introduce a new product or commence using a new process will only be able to evaluate potential infringement issues based on issued patents. Pending patent applications would not be available to be considered. Further, as the pendency period for patent applications is currently increasing in many countries, then the period of uncertainty would be increasing without pre-grant publication. Pre-grant publication shortens this period of uncertainty.

It has also been argued that pre-grant publication may stimulate ideas and promote innovation, as future inventors may be inspired by or motivated by the disclosures of the patent applications that become publicly available. For example, patents and patent applications can be valuable technical documentation that can be used to assist in the development of new technologies by documenting process that work or new apparatus that may be used.

Further, it has been argued that disclosure of pre-grant applications could reduce inefficiencies caused by duplicate inventions. A company may view the patent applications of its competitors and alter its research and development activities to lines of inquiry that are not being pursued by its competitors. This can result in the avoidance of two companies developing similar technologies and the consequential infringement suits that may arise and cause a delay in new products or processes being commercially adopted.

On a similar point, it has also been argued that the early disclosure of advances, which occur due to pre-grant publication, will stimulate new ideas and promote invention in promising fields of research. Early publication will provide a record of promising areas of research and result in additional research being undertaken in such promising areas.

Proponents of the adoption of pre-grant publication as part of the laws of the United States have also argued that pre-grant publication is a necessary step toward the international harmonization of patent laws. Further, it has been argued that harmonization may lower trade barriers and may be particularly valuable to United States companies that would otherwise face substantial costs dealing with several different types of application processes.

Another argument advanced in favor of pre-grant publication of patent applications by the United States is the elimination of so-called "submarine patents". A submarine patent can be understood as a patent application that takes advantage of pre-grant secrecy (particularly in the U.S.) by maintaining broad claims in an emerging technology area in a pending application for a long period of time. When the particular technology at issue becomes economically significant, the submarine patent "surfaces" and is used to hold "new technologies as economic hostage". Mandatory publication of pre-grant applications can eliminate the threat of submarine patents and increase certainty in the marketplace. - FICPI newsletter