Preserving Provisional Rights for Pre-Issuance Patent Damages

• Date: 01 January 2018

Published in Landslide® magazine, Volume 10, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

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Preserving

Provisional

Rights for

Pre-Issuance

Patent

Damages

By Brian V. Slater and John P. Dillon A

rarely invoked but potentially powerful damages

remedy can arise for infringing acts before a pat-

ent issues. Generally, patent owners may collect

damages only for infringement after patent issu-

ance.1 However, 35 U.S.C. §154(d) provides

that a patentee may, under certain circumstances,

obtain a retroactive reasonable royalty from an infringer hav-

ing actual notice of a published patent application. This

remedy––called “provisional rights”––dates back to the 1999

congressional amendments to the Patent Act that, among other

things, brought the US patent system more in line with patent

application standards in the rest of the world.2 Those amend-

ments included the requirement that most patent applications

be published 18 months after their ling. In exchange for this

early publication, and in view of the risk of third parties gain-

ing a competitive advantage from that information, Congress

provided patentees with a reasonable royalty remedy against

any third-party infringer who uses the claimed invention during

the period beginning on the date of patent application publi-

cation and ending on the date the patent issues, provided that

(1)the third party had “actual notice” of the published pat-

ent application, and (2)the invention as claimed in both the

published patent application and the issued patent is “substan-

tially identical.”3 This article discusses recent Federal Circuit

interpretation of these two requirements, identies some open

issues under §154(d), and offers guidance to practitioners on

preserving this potentially valuable remedy.