Preserving Provisional Rights for Pre-Issuance Patent Damages

Brian V. Slater and John P. Dillon

©2018. Published in Landslide, Vol. 10, No. 3, Janusry/February 2018, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

A rarely invoked but potentially powerful damages remedy can arise for infringing acts before a patent issues. Generally, patent owners may collect damages only for infringement after patent issuance.1 However, 35 U.S.C. § 154(d) provides that a patentee may, under certain circumstances, obtain a retroactive reasonable royalty from an infringer having 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 amendments included the requirement that most patent applications be published 18 months after their filing. In exchange for this early publication, and in view of the risk of third parties gaining 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 publication and ending on the date the patent issues, provided that (1) the third party had “actual notice” of the published patent application, and (2) the invention as claimed in both the published patent application and the issued patent is “substantially identical.”3 This article discusses recent Federal Circuit interpretation of these two requirements, identifies some open issues under § 154(d), and offers guidance to practitioners on preserving this potentially valuable remedy.

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