Application Publishing Revisited

Posted Monday, March 14, 2011.

In a prior post, I discussed the publication of applications for patents in the United States. For inventors who seek patent protection exclusively in the United States, there is an option for the application not to be published. For many, this is a good choice. Publishing of the application does have a benefit that is worth noting, however.

The benefit is in the area of damages in an infringement suit. Let’s say that after your patent issues, you become aware of a competitor who is practicing your invention without your permission (i.e. making knockoffs). You might consult with a patent litigator and decide to file an infringement suit against the imitator.

There are a variety of remedies you might seek upon proving infringement, including an injunction to require to competitor to stop selling the product, or a requirement that the competitor pay compensation to you for the unauthorized use of your patented invention.

These options are available to you after you are issued the patent. In other words, you can’t enjoin someone from selling the knockoff until after the patent issues. And normally, you can’t receive royalties from sales of the clone of your patented product before the patent issued. Any award of royalties would be computed from the date the patent issued. Unless, that is, your application for a patent was published.

If you do elect for the application to be published 18 months after filing, which is the default timeframe for apps to be published, in a subsequent infringement suit you can make a claim for “provisional damages”: compensation for the time period between the date the application published and the date of issuance of the patent. The theory is that once the application published, a potential infringer could have become aware of the pending patent.

The damages for this time period are limited to a “reasonable royalty”. You can’t make a claim for other damages or for other relief (like the injunction) for the period prior to issuance. But you can ask to be compensated as if there was a licensing agreement in place under which you would have been earning royalties on the potentially-infringing device. You aren’t guaranteed to receive these damages as there are additional showings that are needed (e.g. the infringer must have had actual notice of the pending patent, among other things). But it is one reason why you might elect to allow your application to publish.

Here’s the typical disclaimer: this post does not substitute for actual legal advice, especially in regards to an infringement suit.

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