Everyone has received information from somebody prefacing their remarks with the line, "I've got good news and bad news." In the world of patents, the same introduction is apropos when considering the publication of patent applications.
To obtain a patent, an applicant must first submit a patent application to the U.S. Patent Office. The bad news for the patent applicant—the application is typically published within 18 months of filing, thereby informing the public of proprietary information even before a patent issues. In fact, the cat is out of the bag even if a patent for the invention never issues. The good news for the patent applicant—under 35 U.S.C. § 154(d), which encompasses provisional patent rights, an inventor may be able to obtain compensation from someone who practices the invention after a patent application is published but before a patent is granted.
What Are Provisional Patent Rights?
The gist of § 154(d) is that a patent includes the right to obtain a reasonable royalty from someone who practiced the patented invention after the patent application was published, but before the patent issued. While the particulars of what constitutes a "reasonable royalty" are beyond the scope of this article, what this phrase generally means is the royalty rate that would be agreed to by a willing patent licensee and willing licensor. The key issues regarding availability of these provisional rights are as follows:
Has the patent application which was published been issued as a patent?
Is the invention claimed in the issued patent substantially identical to the invention as claimed in the published application?
Did the accused party make, use, offer for sale, or sell in, or import into, the United States the invention as claimed in the published patent application?
Did the accused party have actual notice of the published patent application?
The first point highlights the fact that an inventor has no patent rights unless a patent actually issues for the invention, while the third point merely restates the basic guidelines for establishing infringement of a patent. The second and fourth points, which deal with the issue of notice, define the requirements for enforcing provisional patent rights.
When Are the Claimed Inventions "Substantially Identical"?
The second point encompasses the idea that it would not be fair to hold a party liable for infringement of a claimed invention in a published patent application if the claimed invention eventually allowed by the U.S. Patent Office is substantially different. Remember, the right being asserted is based on the issued patent and not on the published application. Although there is little case law on this issue, the legislative history suggests that the standard that a court would apply to this requirement is the same standard applied for reissued patents, i.e., whether the scope of the claimed invention in the issued patent is substantially the same as the scope of the invention claimed in the published application. See, e.g., Slimfold Mfg. Co., Inc. v. Kinkead Indus., Inc., 810 F.2d 1113, 1117 (Fed. Cir. 1987).
What Is Actual Notice?
The fourth point more directly addresses the notice function of patents. While the issuance of a U.S. patent constitutes constructive notice to the world of an inventor's rights, the same rule does not apply to the publishing of patent applications. This makes sense because the claims in a patent application can be, and often are, amended during the patent prosecution process. A person reading a published patent application could not be certain as to whether the claims recited therein will issue as originally drafted, if at all. This makes it impossible for a party to tailor its behavior to avoid infringement.
The requirement for actual notice under § 154(d) has not been addressed directly by the courts, however the legislative history of the law suggests that the actual notice requirement is akin to the actual notice requirement found in 35 U.S.C. § 287(a). Under § 287(a), actual notice exists if there has been an "affirmative communication of a specific charge of infringement by a specific accused product or device." Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994). This means that the question is not whether the accused infringer knew of the patent application, but rather whether the patent owner provided notice thereof and specific allegations of infringement.
What Should Patent Applicants Do to Ensure that Provisional Patents Rights are Available?
First, a patent applicant should directly supply a copy of the published patent application to the possible infringer. This should be done as soon as possible after the publication date. The best bet is to send the published patent application to possible infringers by certified mail.
Second, the patent applicant should specifically identify the claims in the published application that are being practiced.
Third, the patent applicant should identify the specific products or processes and which claims they practice. With products, part numbers or other objective means of device identification should be used. With processes, as much specificity as is possible should be used in identifying the potentially infringing process.
What Can Provisional Patent Rights Do for You?
Provisional patent rights provide a means for inventors to protect their inventions during the time period between the public being informed of the invention and the actual issuance of patent rights. The stakes may be high, since for many patents, the time that elapses between the publication of the application and the issuance of the patent can be several years. However, the burden is on the patentee to protect those rights. To keep open the possibility of recovering for infringement during this period of time, a patent applicant should take the steps outlined in this article. On a similar note, an accused infringer should be aware that it may be liable for infringing actions that occur before a patent is even issued.
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Sanford Warren wishes to thank coauthors Mark Solomon and E.E. "Jack" Richards, both associates at Winstead Sechrest & Minick P.C., for their contributions to this article. The views expressed herein are solely those of the authors and not those of Winstead Sechrest & Minick P.C. or its clients.