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

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. <br>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. &sect;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, <i>A New Law Removes Some Secrecy From the Applications</i>, N.Y. Times, Dec. 4, 2000, at C6. <br>Last month's installment of this article described the prerequisites required to raise a patentee's provisional rights. First, the USPTO must grant a patent from the patent application. Second, the accused infringer must have actual notice of the published patent application. Third, provisional rights are only available if the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application. Last month's installment also described the nuances of each requirement, and also explored unsettled legal questions relating to each. This month's article explores the interplay between the publication requirement and the Provisional Rights Subsection.