Patents > Patent Litigation
Provisional Rights - What if infringement stops before the patent issues?
njiplawyer:
Hello All,
Would a patentee be able to recover pre-grant damages under "provisional rights" in the following scenario?
1. Applicant's utility patent application is published.
2. Applicant becomes aware of Company selling Product covered by the published claims.
3. Applicant puts Company on notice of the published application, and informs Company that Applicant will pursue legal action if a patent issues from the published applicaiton.
4. Company continues to sell the Product for a year, then stops before the patent issues.
5. Applicant's patent application eventually issues as a patent and the claims issue as published (without amendment). The patent issues after the Company has stopped selling the infringing Product. At the time of issue, the Company is no longer selling a Product that infringes the claims.
Can the Applicant pursue pre-grant damages against Company gonig back prior to the issue of the patent, if Company stopped the infringing activity prior to the patent issuing?
Any help on this topic would be tremendous. Thank you!
Simpletown:
Not impossible, but damages seem unlikely given that the idea was still a secret as a provisional application while the other company practiced it. Further, how can you put a company on notice that they are violating a patent when no-one even knows if it will ever issue, and if it does, in what form? You can inform them of the provisional or patent application publication and say it is patent pending, but that doesn't count for much. See the following link. Basically you can't get much until you have an issued patent in your hands. Best to go for one of the expedited routes to getting a patent if you are facing such an issue.
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_287.htm
bleedingpen:
--- Quote from: njiplawyer on 02-21-12 at 03:07 pm ---Hello All,
Would a patentee be able to recover pre-grant damages under "provisional rights" in the following scenario?
1. Applicant's utility patent application is published.
2. Applicant becomes aware of Company selling Product covered by the published claims.
3. Applicant puts Company on notice of the published application, and informs Company that Applicant will pursue legal action if a patent issues from the published applicaiton.
4. Company continues to sell the Product for a year, then stops before the patent issues.
5. Applicant's patent application eventually issues as a patent and the claims issue as published (without amendment). The patent issues after the Company has stopped selling the infringing Product. At the time of issue, the Company is no longer selling a Product that infringes the claims.
Can the Applicant pursue pre-grant damages against Company gonig back prior to the issue of the patent, if Company stopped the infringing activity prior to the patent issuing?
Any help on this topic would be tremendous. Thank you!
--- End quote ---
I think yes. The statute says nothing to make me think otherwise, though that language about ending on the date of patent issuance is kindof funny.
(d) PROVISIONAL RIGHTS.-
(1) IN GENERAL.- In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued-
(A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or
(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and
(B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language.
(2) RIGHT BASED ON SUBSTANTIALLY IDENTICAL INVENTIONS.- The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.
(3) TIME LIMITATION ON OBTAINING A REASONABLE ROYALTY.- The right under paragraph (1) to obtain a reasonable royalty shall be available only in an action brought not later than 6 years after the patent is issued. The right under paragraph (1) to obtain a reasonable royalty shall not be affected by the duration of the period described in paragraph (1).
njiplawyer:
--- Quote from: Simpletown on 02-22-12 at 01:31 am ---Not impossible, but damages seem unlikely given that the idea was still a secret as a provisional application while the other company practiced it. Further, how can you put a company on notice that they are violating a patent when no-one even knows if it will ever issue, and if it does, in what form? You can inform them of the provisional or patent application publication and say it is patent pending, but that doesn't count for much. See the following link. Basically you can't get much until you have an issued patent in your hands. Best to go for one of the expedited routes to getting a patent if you are facing such an issue.
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_287.htm
--- End quote ---
Thanks Simpletown. Just one point of clarification. This is not a provisional application, it's a non-provisional utility application that was published.
njiplawyer:
--- Quote from: bleedingpen on 02-22-12 at 05:15 am ---
I think yes. The statute says nothing to make me think otherwise, though that language about ending on the date of patent issuance is kindof funny.
--- End quote ---
I agree. There doesn't seem to be any case law directly addressing this topic, and nothing in the statute makes me believe that infringement must continue after the patent issues to recover damages under "provisional rights." Thanks for the help!
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