Issue 210 | June 4, 2004
GAO Report Concerning
U.S. Patent Application Publication

The GAO issued a report in May, 2004 evaluating how U.S. patent applications have been affected by the 18-month publication provision of the American Inventors Protection Act of 1999 (AIPA). Interestingly, the AIPA required the GAO to determine (1) the number of patent applications filed only in the U.S.; and (2) whether differences exist between published and unpublished applications. The report, titled “Information about the Publication Provisions of the American Inventors Protection Act” can be found at http://www.gao.gov/docdblite/details.php?rptno=GAO-04-603.

In preparing its report, the GAO evaluated whether or not the applicant filing status as a large entity or a small entity resulted in differences in requests for non-publication of a patent application and in application foreign filing. The report covers 805,000 patent applications filed between November 29, 2000 and November 28, 2003. Of the 805,000 applications studied, 580,000 or (72%) were filed by large entities and 225,000 (28%) were filed by applicants who qualify as small entities.

The GAO report identified four primary differences between published and non-published applications. Those differences are:

  • 85% of applications filed by large entities were published or will be published while 74% of applications filed by small entities were published or will be published.

  • For published patent applications, 22% have issued as patents, 8% are abandoned and the resolution of 456,000 is pending. For non-published patent applications, 25% have issued as patents, 19% are abandoned, and the resolution of 117,000 is pending.

  • It took the USPTO 20 months to review published patent applications and 15 months to review unpublished patent applications.

  • The time between filing and abandonment of applications was 18 months for published patent applications and 8 months for unpublished patent applications.

The GAO also determined that 275,000 (34%) of the U.S. patent applications studied had corresponding foreign applications. It is likely that these applications are PCT national phase applications or U.S. convention filings. Of the remaining 530,000 patent applications studied, the GAO estimates that about 115,000 would be foreign filed.

One of the more interesting items reported by the GAO above is that non-published applications are examined sooner and issue as patents sooner that published applications. The USPTO explains that this difference is a result of not publishing applications that are allowed and issued before the 18 month publication date. Another explanation might be that the process of application publication delays the time it takes for a patent application file to initially reach an examiner. Otherwise, the report quantifies what one would expect, that small entities are less likely to foreign file an application and, therefore, they are more likely to request non-publication of an application.

Please contact Blair Hughes of McDonnell Boehnen Hulbert & Berghoff (312) 913-2123 or at hughes@mbhb.com with any questions that you might have about these materials.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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