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Newsletters

Prior Publication
Autumn, 1998 

    It is well-known that more and more countries adopt the so-called prior publication system which means that after 18 months counting from the filing date or the priority date, the application is automatically laid open for public inspection.@@In some countries, e.g. Mainland China and New Zealand, the publication can even occur earlier.@@In Mainland China, the publication can be advanced upon request before the 18 months from the filing date, while in New Zealand, the publication can be postponed beyond 1 year after the filing date upon petition.@@In the US and Taiwan, they both are facing voices advocating the adoption of such a system which, however, is questioned by me and at least some of the applicants here.@@The pros and cons find founding reasons at least as follows:
  1. Laying open a patent application can seek the assistance of the public to examine whether or not the application does be grantable;
  2. The prior publication system will compulsorily urge the patent specification to be automatically published after 18 months after its filing date which enables the public to examine the relevant technique without delay so that the wasteful repetitive investment situation is obviated and the limited resources on earth can be effectively put into use;
  3. It will give the applicant a relatively longer time period to consider whether he does want its application to be subject to a substantive examination in order that the government needs not be unnecessarily manned to examine an application whose applicant is no longer interested in seeking it patented;
  4. It has allowed the applicant a reasonable time period within which a proper preparation for engaging in production of the subject matter intended to be protected by the patent application should have been performed;
  5. The Patent Office cannot match with the vast public in richness in materials or documents capable of serving as prior arts of a specific patent application so that the applicant will self-restrain from trying to flukingly obtain a patent by filing a patent application of a state-of-the-art level before such a prior publication system.

@@The cons, however, can raise at least the following reasons to question such a system:

  1. As the competition becomes even rigorous with the time, not only the time period between a patent idea is brewed and a patent application is filed is getting shorter and shorter, but also the time period between the patent application is filed and the product intended to be protected by the patent application is marketed also becomes even shorter.@@As a matter of fact, it frequently takes not more than 6 months so far as the latter time period is concerned.@@Under such circumstance, the possible patent owner needs a powerful weapon to effective enjoin the infringer from running into the market in order to secure his benefits.@@Without an officially recognized patent right after a substantive examination, peoples here often doubt whether or not the patent will finally be enforceable.@@Accordingly, the infringer can counterfeit the product possibly protected by a later patent as much as possible before the patent is eventually granted by taking the chance that the patentee cannot effectively take actions against him;
  2. If the major object of the prior publication system is to disclose the relevant technique at an earlier date, e.g. 18 months after the filing date of the patent application in order to alert the public there might be a patent to come up or to eradicate the phenomenon of the so-called 'submarine patent', the present examination system occurred in the US or Taiwan is superior to the prior publication system in that the examination result of a patent application will normally come out around 1 year after the filing date which is more efficient than the prior publication system so that to reveal the relevant technique at an earlier date should not serve as an important excuse for the prior publication system;
  3. As the present situation is, a product is phased out after a relatively short life cycle.@@The situation not seldom is that a patent right is most useful for 2 or 3 years after its filing date and no longer so much useful in whole or in part thereafter.@@Under the prior publication system, however, a patent can be obtained normally only after 2 or 3 or even 5 years after its filing date but then will not work much;
  4. One major object of the prior publication system is for public inspection.@@It appears that this object is not well performed;
  5. Even a provisional protection after the prior publication of the patent application will not effectively or duly protect the product as contemplated by the applicant or as available by a patentee;
  6. Theoretically, it is possible that the potential patentee might try its best efforts to cause its application to pend before the Patent Office until it finds someone else is copying its technique, in order that it can take a strict measure in an efficient manner against the counterfeiter.@@By so doing, the potential patentee on the one hand protects its technique with the assistance of the Patent Office in a way similar to trade secret where there is no counterfeiting problem, while on the other hand, it can hastily cause its application to be patented in order to mercilessly curb the infringer who might independently develop its technique on its own with a vast of its available kinds of resources.@@This is prejudicial in that all of bad effects contemplated by such thinking can be obviated by improving the administrative efficiency and monitoring program in the Patent Office.@@Such improvement, nevertheless, will bring forth advantages reflected as above-described;
  7. Improving administrative efficiency and monitoring program means manning and enlarging the size of the Patent Office, which is an outdated style of solving a problem.@@Nevertheless, it deserves to be noticed or investigated how many applicants or what is the proportion of the applicants do not want their applications to be substantively examined.@@If most of the applicants do want their applications to be substantially examined by filing their applications before the Patent Office, what is the excuse or basis for the policy-making officials or scholars to generate patent policy in violation of the intention of the applicants?

@@While listing positive and negative words as above, we post the following questions to be scrutinized by you which might be helpful to improve the patent practice in your country but we will leave the following questions blank since this country does not adopt such a system presently.

  1. Q: If your country adopts the prior publication system, i.e. laying open a patent application 18 months after its filing date, what kinds of rights can the applicant exercise before it seeks patented its patent application?@@Will they be different for the time periods before and after 18 months after the filing date?
  2. Q: Is it possible for a patent application to be allowed before 18 months after the filing date?
  3. Q: If the patent application can be allowed only after 18 months after the filing date, do the applicants in your country normally complain it takes so long a time to eventually make sure its patent application patentable since it is only after the patent application is granted, can the applicant or patentee effectively take measures against the infringer?
  4. Q: One major object of the prior publication system is to lay open the patent application for public inspection.@@How does this designed object function to which extent in your country?
  5. Q: Formerly, the United Kingdom adopting the prior publication system normally granted a patent application in about 3 years after its filing date.@@Effective from January 1995, it is possible to grant a patent application around one year after its filing date and to have it published for opposition together with the prior publication.@@Do you believe if there are getting more and more countries which formerly adopt the prior publication system but now allow the patent application before 18 months after the filing date, the prior publication system will be undermined or ruined some day in the future?
  6. Q: Do you think the prior publication system do no harm to the public and the applicant in view of the fact that it takes so long a time for the public and the applicant to make sure the patent application is or is not patentable?

@@We hope this article will be also helpful for the USPTO (Patent and Trademark Office of the United States) to stand against the adoption of the prior publication system if found reasonable.

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