Protection between publication of application and grant

[Euro-Pat-Att]

Dear All,
I am a European Patent Attorney, wishing to understand to which extent a published, but not yet granted, patent application blocks others in the US.

By searching around I have already been able to find:  ' If an inventor has a patent pending for an invention and a company begins to use that invention without his permission, the inventor can proceed to get the patent issued and sue the company for patent infringement.  Patent damages start to accrue from the date that the application is published 18 months after it is filed'

Fine, I understand that.

My question really related to whether there is a limit to this. Would these damages, payable from the publication date, be payable for any claims in the granted patent? Or would these damages be limited to embodiments covered by the claims of the application as published, provided these claims get granted in the end?

In other words, I have a client who might want to copy certain aspects of an invention described in a pending patent application, but not the entire invention as claimed in any of the published claims. It may however be possible for the applicant to single out these certain aspects later in a new claim, and get that new claim granted.

In such a scenario, would my client be liable for damages for the period up till grant?

From a European background, the answer would be 'No', because it would be unfair to third parties if the applicant could change his claims to have a retrospective effect on third parties. But what's the situation in the US?

Thanks

[lazyexaminer]

See 35 USC 154(d) for provisional rights.

154(d)(2) requires that the right is available if the invention claimed in the patent is "substantially identical" to that of the published app. My understanding is that the CAFC has rarely or maybe never addressed this issue in a precedential opinion, but there is a good bit of similar case law in reissues and reexams as to this standard (search intervening rights) and the legislative history I think actually says to follow that. I believe any amendment that changes the scope of the claims takes it out of substantially identical.

I caution my understanding may be dated as I don't follow this area of law.

[Tobmapsatonmi]

What lazyexaminer wrote about substantially identical claims granted as were published is also my understanding.

Going to something else you wrote, even if the claims grant substantially identical to publication, note the infringer is only liable for damages starting at the time of publication if he was *actually* made aware of the publication's existence.  I stressed *actually* because the mere publication might be viewed as providing constructive notice, but the statute requires he has actual notice.

[MYK]

note the infringer is only liable for damages starting at the time of publication if he was *actually* made aware of the publication's existence.  I stressed *actually* because the mere publication might be viewed as providing constructive notice, but the statute requires he has actual notice.

I forget whether it was my patent law prof or Jim Ivey, but at least one of them said (IIRC) that you have to mail the infringer the published application and tell them they're infringing.

Also, the prof said he is unaware of anyone ever succeeding in getting 154(d) damages.  He even offered a bet that no one could find a case.  Of course, an infringer could have settled before a verdict and paid without disclosing it in a court document.

[Euro-Pat-Att]

Thanks for your responses.

We are talking here about a traditional mechanical invention. Part A being connected to part B , with part C in between and connected to a further part D. You know the type.

My client's product will always be missing at least one genuine, structural, limitation which is present in the published claims. I suppose that would disqualify it as 'substantially identical', or won't it?

What worries me a bit is 35 USC 154(d)(1)(A)(i), in particular the word 'uses'. Does this mean that my client may legally sell his product (at least up till grant, even in a worst case scenario that the claims get changes), but that his customers who use the product, and by that time will have been using it for years, will have to cease doing so upon grant?

[wildkrazyguy]

If the pending patent claims as written cover A+B+C+D, and your client starts selling A+B+C, they are putting themselves in a risky position. If I were the patent applicant and I found out about what your client was selling, I would immediately amend the claims / file a CON or DIV and cover A+B+C. Upon grant of the patent covering A+B+C, your client would have to decide to keep infringing or shut down production and sales. How much that costs depends on the industry, if they invested millions in developing a production line, etc.

Companies usually do not go after individual end-users for infringement because the damages are not worth the cost of the lawsuit. But if the "end-user" are corporate entities such as universities, pharmaceutical companies, oil companies, etc. and not individuals, then there is decent likelihood they would be pursued for use, and possibly your  client would have duty to indemnify. I would make sure your client understands these risks.