Early publication [6] was introduced into U.S. Patent law by the 1999 reforms. It will apply to applications filed on or after November 29, 2000 if there are or are to be foreign equivalent applications filed in countries where early publication will take place. Publication will be by electronic means, although paper copies will be supplied on request subject to payment of a fee.

The publication is intended to take place "promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought", although the applicant may request earlier publication. [7] Additionally, the rules provide for early publication of applications that were pending on November 29, 2000 if the applicant so requests. [8] There will be no early publication of design patent applications. If the applicant certifies at filing that the application has not been and will not be the subject of an application in another country or under an international treaty that results in early publication, there shall be no early publication of the U.S. application. [9] If such a certification is made but the applicant proceeds with a foreign filing that will result in publication, the USPTO must be advised within 45 days. Failure to do so will result in the U.S. application being deemed to be abandoned unless a showing is made that the delay was unintentional. In the case where the U.S. application includes subject matter that will not be published abroad, the applicant can request that a redacted version of the U.S. application is published. A consequence of this change is that provision is made for the adoption of rules to tighten up the requirements as to when priority from some other application must be claimed. Another consequence is that it is now expressly stated that any pre-grant protest proceeding is subject to the express consent of the applicant. The USPTO is to charge fees to cover the publication costs. These will be levied at the point at which the application is allowed.

Once publication has occurred or, in the case of a PCT application designating the United States, the USPTO receives a copy of the PCT publication if it is in English or an English translation of the publication if the PCT publication is not in English, the applicant has provisional rights to obtain a reasonable royalty from any one who uses the invention as long as the invention as claimed in the early publication is "substantially identical to the invention as claimed in the published application." [10] Such rights are, however, subject to a requirement that the alleged user is given actual notice of the publication and, in the case where the rights derive from a PCT publication that is not in English, an English translation of the publication. Any claim for compensation under this provision must be made within six years of the grant of the patent. It remains to be seen how the term "reasonable royalty" will be construed in this context. The term is used elsewhere in the statute to provide for the minimum amount of damages to be awarded for patent infringement when the actual damages cannot be determined.

In that context, the courts have held that "reasonable royalty" means more than the royalty that would have been negotiated between a willing licensor and licensee since some account has to be taken of the wrongful nature of the infringing act. It is not clear whether this reasoning will necessarily apply to situations where the right in question derives only from a published application that does not bear the presumption of validity associated with a granted patent.

Early published applications will in general be effective as prior art under 35 USC 102(e) so that they will be able to be cited against later filed applications by others with effect from their filing dates. The amendment to 35 USC 103 (c) discussed below means that this provision will not apply if the inventions of the two applications are commonly owned at the time the second invention was made. Additionally, PCT applications designating the United States that are published in English will have a prior art effect from their international filing date. [11]

4.1 Rules Implementing Early Publication

The USPTO has issued rules in connection with early publication. [12] The official comments on the proposed rules make it clear that the USPTO intends to tighten up compliance with the rules that already exist relating to formalities in documents that are to be published, so as to ensure that the documents are in good form for publication.

Normally the published text will be that of the application as filed. However, an amended text may be published if within one month of the actual filing date of the application or fourteen months of the earliest filing date of which the benefit is claimed, whichever is the later, the applicant makes a request for publication of the amended text and supplies a copy in compliance with electronic filing system requirements. [13]

Specific requirements of the rules include:

(1) any claim to convention priority in a non-PCT utility or plant patent application must be made by the later of four months from the actual filing date and sixteen months of the claimed priority date, this term being inextensible; [14]

(2) essentially similar requirements apply in respect of continuations, continuations-in-part and divisional applications claiming priority from earlier non-provisional U.S. applications; [15]

(3) in general, objections to drawings will have to be dealt with promptly; [16]

(4) provision is made for third parties to submit prior art to the USPTO that may be relevant to the patentability of an early-published application; [17]

(5) requests that a particular application is not subject to early publication must state what it is “in a conspicuous manner” and include a certification that "the invention disclosed in the application has not been and will not be the subject of an application filed in another country, or under a multilateral agreement, that requires publication at eighteen months after filing"; [18]

(6) provision is made for rescinding a request that an application is not subject to early publication; [19]

(7) if a request has been made to avoid early publication and the applicant subsequently files an application for the invention in a country or under a treaty that provides for eighteen month publication, the applicant must advise the USPTO of this within forty-five days of that foreign filing (failure to do so will result in the abandonment of the U.S. application affected); [20]

(8) if the applicant wishes a redacted copy of its U.S. application to be published because the U.S. application contains additional subject matter that is not included in any foreign applications that are to be published, the redacted version must be filed within sixteen months of the earliest filing date from which benefit is claimed and the redacted version must be submitted in accordance with the USPTO's electronic filing system requirements and be accompanied by additional paper copies of the foreign filed documents (and translations thereof when not in English) and of the U.S. application showing the redactions and various certifications affirming that the redacted material will not be published in the foreign applications; [21] and

(9) provision is made for submission of a translation of a PCT application published in a language other than English so as to obtain the right to claim compensation from anyone using the invention claimed therein. [22]

4.2 Effect of Early Publication on Claim Drafting Practice

The provisions relating to the situations in which one can obtain a reasonable royalty for use of the invention by third parties between the date of early publication and the grant of a patent make it likely that, at least until the law is clarified as to how similar the published claims and the granted claims must be for compensation to be paid, there will be an increase in the number of claims included in U.S. patent applications to try to ensure that anything for which one may wish to seek compensation falls within a claim which is unchanged between the first publication and the grant of the patent. At the very least, applicants should try to ensure that claims are present in all possible claim categories and that specific claims are present directed to subject matter that is particularly preferred. The trend towards an increasing number of claims is also likely to be accelerated by the decision of the Court of Appeals for the Federal Circuit on November 29, 2000 in the case of Festo v. Shoketsu Kinzoku KK . The Court, when considering whether an amendment to a claim during prosecution would create an estoppel against a broad interpretation of that claim for purposes of determining infringement under the doctrine of equivalents, held that "an amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element" irrespective of whether that amendment was to distinguish from the prior art, to clarify the meaning of the claim or for any other reason related to patentability. The decision also held that "when a claim amendment creates prosecution history estoppel, no range of equivalents is available for the amended claim element." This decision presents a further reason why it is now desirable to ensure that one includes claims in the original applications that are likely to survive prosecution without amendment since it seems unlikely that any claim that has been amended during prosecution will be entitled to any added protection under the doctrine of equivalents at least so far as the claim limitation that was amended is concerned.