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[cny]

I am a pro se patent applicant and have been told by examiner a notice of allowance will issue.  It has been over one year since I filed my U.S. application BUT there has been no publication by me and I filed a non-publication request with the PTO when I filed my application about 19 months ago.  Can't I still foreign file but just not get the benefit of my U.S. filing date? i.e. I'll be "stuck" with my foreign filing date?  Thanks.

[ChrisWhewell]

I think that's right.

Keep in mind that foreign jurisdictions allow claim language that is not permitted by the USPTO.  When I write a case for another patent office, I'm happier because of the increased latitude in creative claim construction permitted.  It is sometimes difficult, imagining myself any happier, but it does happen.

[pentazole]

Also keep in mind that patent prosecution laws are different, and you will most likely not get any claims allowed if they are based on the same disclosure as the US patent. 

[CriterionD]

and you will most likely not get any claims allowed if they are based on the same disclosure as the US patent. 

Its almost besides the point as to whether or not the claims would be allowed, even if allowed they could eventually be invalidated.  Any US patent publication will be considered prior art relative to a foreign patent in most if not all countries, and non-publication is only an option before a patent issues.  But I guess this might not hurt if you file applications before your US patent is published, but I'm not even sure about that. 

btw, non-publication is not an option when also filing for foreign patent protection.  You are required to notify the USPTO of foreign filing within forty five days so that they may publish your application.  If you fail to do it is pretty much, at least according to the official rules, the equivalent of abandoning your application. 

On that note, one thing I believe you could do would be to abandon your application and cease paying any necessary fees to avoid issuance.  That way your US patent doesn't issue (or publish), and you may then file another application.  That way you can apply for foreign patent protection with no related worries, but you also lose your initial priority date even in the US (the US operates on 'first to invent,' but no one wants to bother with interference proceedings and such). 

Also, if you have made public any aspect of your invention, this may be all moot....Outside of the US, any pre-application sale or alternate public disclosure will usually bar patentability all together.

[pentazole]

On that note, one thing I believe you could do would be to abandon your application and cease paying any necessary fees to avoid issuance.  That way your US patent doesn't issue (or publish), and you may then file another application.  That way you can apply for foreign patent protection with no related worries, but you also lose your initial priority date even in the US (the US operates on 'first to invent,' but no one wants to bother with interference proceedings and such). 

Don't do that!     Just because you CAN do it, doesn't mean you SHOULD do it!

[Isaac]

Any US patent publication will be considered prior art relative to a foreign patent in most if not all countries, and non-publication is only an option before a patent issues.  But I guess this might not hurt if you file applications before your US patent is published, but I'm not even sure about that. 

It appears that the OP wants to file the foreign application before his current application is published.  Further, foreign countries don't apply 102(e) dates, so the US patent would not be prior art in most (probably all) foreign countries.

While it is true that you are not supposed to use a non-publication request if you intend to file a foreign application, I don't believe that it is illegal to change your mind.  Further, I wonder if the PTO even cares about the 45 day notification if the patent is published shortly (less than one month) after the foreign application is filed.