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Recovery of Damages for Use of the Invention Claimed in a Published Patent Application
Part Two of a Two-Part Series
In last month's issue, we discussed the prerequisites for a patentee to recover a royalty for his provisional rights. Provisional rights are intended to give a patent applicant interim protection for the disclosure of his invention from the date on which a patent application is published through the date of patent issuance. In the absence of provisional rights, infringement of the invention as published in the patent application would leave the patentee without redress for infringement while the application is being prosecuted. Without provisional rights, the patentee can stop infringement when a patent issues, but cannot seek compensation for prior infringement of the published patent application.
To address the vulnerabilities of a patent applicant prior to issuance of a patent, Congress enacted the Provisional Rights subsection as part of the American Inventors Protection Act of 1999. Notable among a patent applicant's provisional rights is the right to assess a “reasonable royalty” for use of an invention as claimed in the published application. 35 U.S.C. '154(d) (2000). As the Director of the USPTO commented, “In practice, this would serve as a brake on potential infringers … from blatantly infringing because they know once the patent is issued, they're liable [for infringing the patent application].” Sabra Chartrand, A New Law Removes Some Secrecy From the Applications, N.Y. Times, Dec. 4, 2000, at C6.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
Warehouse Liability: Know Before You Stow!
As consumers continue to shift purchasing and consumption habits in the aftermath of the pandemic, manufacturers are increasingly reliant on third-party logistics and warehousing to ensure their products timely reach the market.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?