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[novobarro]

What protections does a provisional and non-provisional give the inventor?

For example, if I find that someone else is making my invention, what rights do I have with each application before/after the patent is issued?

Thanks,

[Yak]

Generally there are no enforceable rights until patent issues.

Provisional = None

Utility with pre-grant publication at 18 months = the patent owner can obtain reasonable royalty damages for certain infringing activities that occurred before patent's date of issuance if the infringing activities occurred after the publication of the patent application, the patented claims are substantially identical to the claims in the published application, and the infringer had "actual notice" of the published patent application.

Utility with non-publication request = None

[klaviernista]

Utility with pre-grant publication at 18 months = the patent owner can obtain reasonable royalty damages for certain infringing activities that occurred before patent's date of issuance if the infringing activities occurred after the publication of the patent application, the patented claims are substantially identical to the claims in the published application, and the infringer had "actual notice" of the published patent application.

Yak:  Have you ever seen anyone prevail on a request for damages based on provisional rights theory "provisional rights" theory?  I haven't.  And when I asked this question of a few high profile patent litigators, they responded that they had not either. 

I'm not trying to be coy or argumentative. My current employer was at one time very interested in the concept of provisional rights.  but after researching the topic somewhat, it appeared to fall into the category of "nice in theory, unusual in reality."  Thus, I am keenly interested in any case cites you can share re: the topic of provisional rights.

interestingly, at least one article has been written on how to maximize the chance of collecting on a provisional rights theory. See, e.g., http://www.merchantgould.com/CM/Articles/articles-68.doc.  But equally interesting is that the article doesn't cite to a single case in which a provisional rights theory succeeded.

[Yak]

Klav,

No.  I have not heard, read, or had any first hand experience of any successful provisional damages being awarded. 

I think your "nice in theory, unusual in reality" comment is spot on. 

I didn't mean to imply to the OP that there was a good chance at succeeding in obtaining those damages.

I have also read that the potential patent holder must carefully prepare the actual notification to the alleged infringer so they can not interpret it as a cease and desist demand and initiate a declaratory judgment action against the potential patent holder. 

[bleedingpen]

I know of only one case in which provisional rights damages were awarded.

It is the pot of gold at the end of the rainbow. 

[klaviernista]

I didn't mean to imply to the OP that there was a good chance at succeeding in obtaining those damages.

I don't think you implied that.  Your prior comments were right on.  After all, provisional rights are technically available under the patent statute.  I was just asking (out of genuine curiosity) whether you had seen a successful case.

The next time I see a former litigator colleague of mine, I'm going to ask him a different question.  "Why haven't provisional rights arguments succeeded?"

[Yak]

The next time I see a former litigator colleague of mine, I'm going to ask him a different question.  "Why haven't provisional rights arguments succeeded?"

Please let us know what his reply is...

[bleedingpen]

The next time I see a former litigator colleague of mine, I'm going to ask him a different question.  "Why haven't provisional rights arguments succeeded?"

The notice provisions.....