[Bold red highlight not included in original transmittal reply.]
As I’m sure you understand, I am limited to providing information that we have publicly-released.
A utility non-provisional patent application filed in the United States Patent and Trademark Office ordinarily is published within 18-months of the earliest effective priority date of the application.
In some circumstances, 18-month publication is required by the U.S.P.T.O, such as when Applicant has filed or intends to file an application for the invention in a foreign country or an international application for the invention. In other circumstances, 18-month publication is prohibited by the U.S.P.T.O., such as when an application is subject to a secrecy order.
If the Applicant has no intention of filing an application for the invention in another country or under a multilateral international agreement that requires publication of applications 18 months after filing, then the Applicant may have the option of filing a nonpublication request at the time of filing the application. The U.S.P.T.O. provides strict requirements for such a nonpublication request including filing the request with the application at the time of filing, requiring an inquiry into applicant’s intent at the time the nonpublication request is being filed, and filing a certification that applicant has no intention of filing an application for the invention in another country or under a multilateral international agreement that requires publication of applications 18 months after filing. The U.S.P.T.O. also provides strict requirements after the filing of a nonpublication request. If applicant filed a nonpublication request and later decides to file a counterpart foreign or international application in another country, or under a multilateral agreement, that requires eighteen-month publication, applicant must either rescind the nonpublication request before filing such foreign or international application; or notify the Office of such filing no later than 45 days after the filing date of the counterpart foreign or international application.
Simply having the option of filing a nonpublication request is not dispositive of whether Applicant should file such a request. There are a variety of reasons for requesting non-publication of a patent application, and a variety of reasons for permitting ordinary 18 month publication of the application, or for requesting early publication of the application.
For example, one potential advantage to filing a nonpublication request is the option of maintaining confidentially of the invention throughout the prosecution process of the application until such time as when/if the application issues as a patent.
On the other hand, one potential advantage to 18-month publication, or early publication, of the invention is that the publication can be used as prior art to reject any later filed U.S. or foreign application (e.g., filed by a competitor), irrespective of whether the published application issues as a patent, which may prevent competitors from being able to patent similar technology. Another potential advantage to 18-month publication, or early publication, of the invention is that the publication may provide the Applicant with the opportunity to establish provisional rights dating back to the publication of the application for purposes of calculating damages for infringement of an eventual issued patent.
As mentioned above, non-provisional patent applications ordinarily are published 18-months from the earliest priority date. However, an Applicant may have to wait anywhere from one to three years, or in some cases even longer, until the USPTO substantively reviews and commences examination of the patent application due to lengthy backlogs. The time until examination actually commences varies considerably on a case-by-case basis depending on the particular technology of the invention and the current backlog in the particular technology center at the USPTO that is tasked with examining the application. After the USPTO commences examination, the patent examination process can continue for another one-to-three years, and in some cases even longer, before an application issues as a patent. During the examination, the USPTO will evaluate the patentability of the claimed invention under the appropriate statutes. This typically involves the issuance of several Office Actions by the USPTO in which prior art is used to reject the claims of the application, and corresponding Responses by Applicant to the USPTO in which the application may be amended to clarify or further define the claimed invention.
If or when the USPTO provides an indication that all of the claimed subject matter is allowable, the Applicant will be required to pay the appropriate issue and publication fees, following which the USPTO with issue the patent by publishing the patent. The published patent may differ from the published application as a result of amendments made during prosecution of the application.
While the patent process is a lengthy process and requires the eventual disclosure of the invention to the public, the patent process is necessary to provide the opportunity to enforce NENE’s intellectual property rights against its competitors.
As we continue to advance our technology we will provide more information in the future, and hope that we will see an increased interest in our Company and value for our shareholders.
TRUTH
I've never claimed to have all the answers but feel i'm beginning to corner the market in questions worthy of solutions.
