However, early publication is not without its risks. Primarily, by publishing early an inventor’s patent application will become readily accessible by competitors. Early publication allows a competitor to more easily design around an inventor’s pending patent application, thereby avoiding any risk of infringement. This is especially likely in highly competitive markets. Additionally, as the patent application is still pending, the inventor will not be sure of the scope of protections granted by an eventual allowable patent, which generally gets narrowed over the course of prosecution. Therefore, promises made or expectations of investors or potential licensees will be difficult to manage. Finally, another major pitfall of early publication is pre-issuance submissions by third parties. Specifically, under 35 USC 122(e), a third party may submit additional prior art to the patent office to be used against an inventor’s pending application during prosecution. Once a patent application is published, any third party, such as competitors in the market, can submit additional information to the Patent Office within a specific timeframe. These submissions can take the form of published patent applications, issued patents, or other printed publications of relevance to the examination of the application. These materials can be used against the inventor during prosecution.
Ultimately, the decision to request early publication or to allow the patent application to publish normally is one that should be determined on a case-by-case basis. As a general rule of thumb, early publication provides the greatest benefits to inventors whose products are nearing the marketing stage at the time of filing. Once the inventor is ready to enter the marketplace, there is minimal time for a potential competitor to use an inventor’s own patent application against them. Otherwise, if the inventor’s product is years away from entering the market, waiting for standard publication may be the best course of action.
