Chances are that you have purchased products in packaging that indicated in tiny letters “Patent Pending” or “Patent Applied For.” This text indicates that a patent application has been filed with the USPTO but has not yet been granted. These markings are meant to discourage imitators, but don’t actually carry any legal weight. Until a patent is actually granted, the legal protections against infringing competitors are not yet in place.
However, provisional rights derived from patent applications are enforceable, and can yield monetary damages when infringed.
Under the American Inventors Protection Act of 1999, 35 U.S.C. § 154(d):
“…a patent shall include the right to obtain a reasonable royalty from any person who… 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 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…”
The import of this is quite significant—in short, published patent applications afford applicants the opportunity to obtain monetary royalties from anyone who infringes on the application, even before the USPTO has granted a patent. Once the patent application is published by the USPTO, the patent holder may assert provisional rights.
If you would like assistance with fast-tracking your patent application so that you can start asserting provisional rights and stopping imitators in their tracks, contact the Law Office of Michael O’Brien by calling (916) 760-8265, or by sending us a message with our contact form.
How can a patent lawyer help me assert provisional rights?
The process starts when an inventor hires me to draft a non-provisional patent application. Typically, patent applications are published by the USPTO 18 months after they are submitted.
But you may instead choose to request early publication, a free service offered by the USPTO. Submitting a patent application along with a request for early publication ensures that you receive provisional rights as soon as possible, as the application is published in the USPTO’s official gazette 1 month after being submitted, rather than the typical 18 months. Remember, you’re only eligible for royalties after the application is published. Early publication moves the date on which you’re eligible for infringement royalties back by 17 months.
However, provisional rights can’t just be passively enforced. Potential infringers aren’t required to be proactive about seeking out your patent application. Once the patent application is published, if you come across infringement of your application, you can’t just immediately file a lawsuit.
A patent applicant can only collect a royalty if they directly notify an infringer of the existence of the application.
In a recent lawsuit filed against Adobe Systems, the software giant was accused of infringing on Rosebud LMS’s provisional rights for a software feature temporarily implemented in Adobe Acrobat. Rosebud argued that Adobe was aware of their patent application because:
- Another patent application that was the subject of dispute in a prior court case involving the two companies contained information on the infringed-upon creation.
- Adobe source code referred to Rosebud code.
- Emails written by Adobe employees referred to a Rosebud product and a previously disputed Rosebud patent.
- It was likely that patent attorneys representing Adobe would have searched for patent applications and patents relevant to the prior lawsuit.
However, the court found that it wasn’t Adobe’s duty to seek out any patent applications potentially relating to the infringing software feature in Adobe Acrobat. Because Rosebud had not directly notified Adobe, they were not eligible to collect royalties stemming from their provisional rights.
This means that if you spot a product that infringes upon your patent application, you must send the manufacturer a copy of your patent application, and inform them of how their product is infringing upon your provisional rights. From that point forward, you are eligible to collect royalties if you file suit and show that infringement occurred.
The provisional rights approach does have its risks.
In order to obtain provisional rights, the invention claimed in the published application needs to be “substantially identical” to the invention claimed in the issued patent. This means that you cannot have any narrowing amendments. Only 15% of applications issue without narrowing amendments, so the number of patent applications eligible for provisional rights is small.
Unsurprisingly, the first thing an accused infringer usually does when they receive a notice of provisional rights is to try to either get the patent substantially narrowed, or rejected altogether by submitting a third party preissuance submission of prior art. Contacting an infringer turns your patent application into one big legal target, so be prepared to defend yourself in court.
If you would like assistance with asserting your provisional rights against someone who has infringed upon your patent application, we can help. For more information, give us a call at (916) 760-8265, send us an email through our contact form.