Recovery of Damages for Use of the Invention Claimed in a Published Patent Application

For about 200 years, the United States kept all patent applications confidential prior to issuance of a patent. Sabra Chartrand, <i>A New Law Removes Some Secrecy From the Applications</i>, N.Y. Times, Dec. 4, 2000, at C6. However, as the Director of the U.S. Patent and Trademark Office ("USPTO") noted, secrecy eventually gave way to global harmonization. <i>Id.</i> Under the American Inventors Protection Act of 1999 ("AIPA"), patent applications are published by the USPTO 18 months after the earliest claimed filing date. 35 U.S.C. '122(b) (2004). This change in U.S. patent practice presented a risk that a patent applicant's invention, once publicly disclosed, would be vulnerable to unrestrained use until the patent, with its associated intellectual property protections, actually issued. To address the vulnerabilities of a patent applicant prior to issuance of a patent, Congress enacted the Provisional Rights subsection as part of the AIPA.

22 minute read January 28, 2005 at 10:54 AM
By
Jitendra Malik, Ph.D. and Michael S. Connor
Recovery of Damages for Use of the Invention Claimed in a Published Patent Application

Part One of a Two-Part Series

For about 200 years, the United States kept all patent applications confidential prior to issuance of a patent. Sabra Chartrand, A New Law Removes Some Secrecy From the Applications, N.Y. Times, Dec. 4, 2000, at C6.

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