Chapter §20.12 Time Limitation on Damages Recovery

• Jurisdiction: United States

§20.12 Time Limitation on Damages Recovery

[A] Statutory Basis: 35 U.S.C. §286

Unlike its copyright counterpart,¹²⁷² U.S. patent law does not recognize a general statute of limitations in the sense of a statutory provision that bars the maintenance of an infringement suit following a delay in filing the suit for a certain number of years after the patentee had notice of the alleged infringing activity.¹²⁷³ However, the Patent Act does provide a practical limitation on the time period in which infringement actions seeking the remedy of damages can be brought:

§286. Time Limitation on Damages

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

. . . . ¹²⁷⁴

[B] Six Year Pre-Filing Period

Section 286 provides that in an infringement action seeking damages (e.g., based on theories of lost profits and/or reasonable royalties),¹²⁷⁵ the patent owner's damages recovery period extends retroactively to, at most, six years before the action was filed. This means that even if infringement was ongoing for ten years prior to the filing of suit, the patentee can recover only the most recent six years of infringement damages accrued prior to the filing of the lawsuit. If the patent expired more than six years prior to the filing of the infringement suit, §286 bars any monetary recovery.¹²⁷⁶

[C] Claims Against the U.S. Government

The U.S. government has waived sovereign immunity from suit for use of inventions patented by third parties. When a patent owner sues the U.S. government for patent infringement, the action proceeds under 28 U.S.C. §1498. A patentee in this context has the option, prior to suing under §1498, of initiating an administrative claim against the government agency or department it believes has infringed. In such cases, the patentee has up to six years from the date of filing the administrative claim to take the additional step of filing a §1498 lawsuit (in the event that the administrative claim does not settle the matter). The second paragraph of 35 U.S.C. 286 governs:

§286. Time limitation on damages

. . .

In the case of claims against the United States Government for use of a patented invention, the period before bringing suit, up to six years, between the date of receipt of a written claim for compensation by the department or agency of the Government having authority to settle such claim, and

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