No matter how beautifully written your patent application is, or how amazing its drawings, the application won’t officially see the light of day for quite a while. In the US, a utility patent application normally remains secret for 18 months after its filing date.*
At that point, the USPTO will “publish” the application. This is a standard and automatic event, and it doesn’t change or affect the status of the examination process. You may or may not have heard back from the Examiner yet. Having a published patent application doesn’t mean your patent has been allowed, or that you now “have” a patent. The publication of your application only means that it can be found and reviewed by anyone wishing to search for it.
What Happens When a Patent Application is Published?
A couple of things happen when your patent application is published:
1. Your application is made public. The USPTO creates a full official copy of the application, complete with a unique publication number. As of the publication date, this copy of the application can be found by anyone who searches for it (e.g., using Public PAIR or Google Patents).
2. The time window begins for “provisional rights.” In general, you can’t stop anyone from infringing your patent rights until you actually have those patent rights. That means your patent application must be allowed by the Patent Office AND actually issue as a patent before you can take anyone to court or otherwise enforce the patent. However, you may be able to reach back earlier than that, by taking advantage of what’s known as “provisional rights” in the invention claimed in your published application. The name is confusing, because it has nothing to do with a provisional patent application. As a result, many people instead call these rights “pre-issuance rights.”
What are Provisional Rights?
As mentioned above, without provisional rights you can only get damages or royalties for infringement that happens after the patent is granted. With provisional rights, if certain requirements are met, the patent owner can obtain royalties from infringement that happened earlier. Specifically, infringement that happened after publication of the application (i.e., before the patent is granted).
By statute, provisional or pre-issuance rights apply to the time between publication of the patent application and issuance of the patent. The length of this time window can therefore be anywhere from zero days to several years, depending on how fast the patent is granted. Note that the time window and the rights are irrelevant if a patent never issues, because you still cannot enforce any patent rights (including provisional rights) until you have a patent to enforce. Because of that, these pre-issuance rights are only retroactive in nature.
What’s Required to Use Them?
How do you qualify to obtain royalties from the time before the patent was granted? The statute has two requirements:
1. Unchanged Claims. To assert one of the patent claims, the claim listed in the resulting patent must be “substantially identical” to the claim as it appeared in the published patent application. This is quite often not the case, as applicants frequently amend claims during the examination process. Accordingly, your patent attorney should know if you plan to assert your provisional rights. That way, he or she can focus on prosecution strategies that minimize claim amendments, to the extent possible.
2. Actual Notice. The potential infringer must have actually known of the published patent application. In other words, you have to show that the infringing party definitely knew about your patent application. You can’t assume they know, even after it becomes public. It’s also not good enough that they “should have known” about it. One way to ensure this requirement is met is to affirmatively make them aware of it, e.g., by having your attorney send a copy.
If you think someone is infringing the claims in your patent application, but you don’t yet have a granted patent, talk to your patent attorney. Ask about the availability of provisional rights, and what steps might be taken to put any potential infringers on notice. If you have any questions about this or any other IP matter, we’d be happy to talk with you about it.
- If your nonprovisional application has an associated provisional application, the 18 months is calculated from the filing date of the provisional.
- Publication can be avoided only if you specifically request non-publication early in the application process. Requesting non-publication is uncommon, as it requires that you never file any patent applications on this invention outside the US. It also negates the ability to obtain provisional rights.
- Design patent applications are never published.
Blog Post © 2020 Kolitch Romano LLP
Photo © 2014 Dave Bourgeau
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.