Should we go public?
(An overview of H.R.400 - Title II)
by Peter Nieves

Some controversy arises upon discussion of the 18 month patent publication provision of H.R.
400. It is in hope of clarifying such controversies that I provide this summary of the issues addressed
by Title II of H.R.400.

Article I. §8, clause 8 of the U.S. Constitution provides that “The Congress shall have Power
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries.” This section of the
constitution allows Congress to change and pass new laws which affect the patent system. This is
the case with H.R.400. H.R. 400 was introduced January 9, 1997 into the 105th congress by the
Honorable Howard Coble. This bill was formerly H.R. 3460 in the 104th congress which
encompassed 6 titles, Title II of which was the Honorable Moorhead’s H.R. 1733 that addressed
the 18 month patent application publication.

With the history behind us the most important issues are now reviewed. Title II of H.R. 400
provides for the prompt publication of filed patent applications after the expiration of a period of
18 months from the earliest filing date, and even for earlier publication upon request of the patent
applicant. The first controversy raised is that of what are the repercussions on the inventor. The 18
month publication allows for early disclosure of the inventions and technologies already addressed
in one’s field. The implications of this are vast. Currently, an inventor may spend thousands of
dollars and many years of their valuable time only to find that after filing for a patent, the invention
has already been filed for and is pending issuance. With the present bill, inventors may obtain early
access to the detailed descriptions of patents awaiting issuance and can focus their time, energy, and
money on either improvements or other inventions. The early publication in turn allows for better
fund management, use of resources, and quicker advancement of technology.

An advantage of the 18 month publication is the availability of Provisional Royalties. Presently,
if a patent application is infringed upon no remedy is available until issuance of a patent, upon which
the patentee may enforce their right to exclude others from making, using, or offering to sell the
patented invention. With the 18 month publication, upon the issuance of a patent, the patentee shall
have the right to obtain a reasonable royalty from any party who infringed their invention during the
time from the date of publication of the application to the grant of the patent. The combination of the
present 20 year patent term and the 18 month publication will provide at least 18 1/2 years of
patent protection rights to a successful patent applicant and potentially more to an applicant who
requests publication of their patent application before 18 months.

A specific concern of inventors is that the 18 month publication will take away their chances of
maintaining a trade secret due to inevitable publication of their patent application by the PTO. This
concern has been addressed by H.R.400 and the patent statute in numerous ways. First, the PTO is
under a duty of confidentiality under 35 U.S.C. §122 to keep all patent applications and information
concerning the same in confidence unless given the authority to do otherwise by the applicant.
Therefore, an applicant may request cancellation of their patent application at any time before the
18 month period and the PTO shall remain bound by their duty of confidentiality, thereby keeping
the applicant’s technology secret. Secondly, H.R. 400 has also addressed this concern by
proposing that if at the time of filing the patent application the applicant so requests, the application
will not be published at the 18 month mark until 3 months after an initial patentability determination
by the PTO. The only requirement for this proposition is that the applicant certify that they did not
also file in a foreign country. This provision ensures that the patent applicant will be given plenty of
time to analyze all aspects which concern the patentability of their invention such as the chances of
receiving a patent, the future costs of the prosecution of the patent application, and the time it will
take until a patent will be awarded by the PTO, and if they feel that patentability is not a likely
outcome, to pursue trade secret status.

Another matter addressed by the 18 month publication is that patent applications of foreign
origin will be translated into English within 18 months. Presently, U.S. inventors must wait until a
foreign patent application is issued as a patent before they will have the benefit of the disclosed
technology within. Unlike the present situation in the U.S., foreign countries such as Japan publish
patent applications at 18 months thereby revealing to their inventors the vast knowledge and
technology contained in a patent application and giving them a “head start” in the inventing of new
technology. The 18 month publication proposes to lead to faster advancement in technology in the
U.S. and a more even “playing field” between U.S. and foreign inventors.

The aforementioned is only a brief summary of the concerns addressed by the 18 month
publication proposition of H.R.400. The question still remains; Should we go public?

Peter Nieves is a second year patent law student who attends Franklin Pierce Law Center located
in Concord, New Hampshire. He has a B.S. in Electrical Engineering from the State University of
New York at Buffalo and is currently working on receiving his Juris Doctor and Master of
Intellectual Property from FPLC. Currently, he is Co-Director of the New Hampshire Inventor’s
Assistance Program, a student member of the American Bar Association, and works as a patent
clerk at Davis, Bujold, and Streck, P.C., located in Manchester, New Hampshire. On his “free
time” he creates web pages, such as Peter’s Patent Page
(http://www.mv.com/ipusers/nieves/patent.htm), tutors Japanese students with the English language,
enjoys cooking, and plays volleyball with members of the United States Volleyball Association.