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If I have claims submitted along with my PPA form, and my PPA is descriptive, will I then be eligible to receive damages in a scenario where:

  • I filed my PPA on Jan-01-2017,
  • filed for NP (claiming PPA's priority) on Dec-31-2017
  • had my NP published on May-30-2018.
  • an infringer infringes my application on April-01-2018.
  • On Dec-31-2019 I have my patent granted.

Will I then be eligible for infringement damage, after 31-Dec-2019 for the infringement made on April-01-2018"?

Is my assumption correct - that effective filing date is filing date of any patent application (PCT, PPA, NP) with claims? And that after patent grant, inventor is eligible for receiving infringement royalty from the filing date of such an application (any application with claim/detailed description of invention)?

from this post:

" The rights of the patent owner start from the date of publication (generally 18 months after filing the patent application) of the patent application. However, a patent owner can file a patent infringement suit only after the patent is granted. " - Is this pre-AIA or AIA First to File act?

Also, from this link, PDF page : 4/14:

"However, Congress gave patent applicants provisional rights in their published patent applications as an incentive to publish, so that information about new advances could be shared with the public regardless of whether a patent issues from an application."

Don't they seem to contradict? Or am I just misunderstanding?

Please assist me

  • More or less, I don't have time for an extensive answer right now, but where it was to be foreseen or reasonably expectable that that would be part of the protection scope, yes, you can claim infringement backwards after the grant (with lower or no punitive damages though). google.de/… There is pretty much on this on the Internet too ;) – DonQuiKong Jan 19 '17 at 7:41
  • I'm not sure about provisinals and the time between prov. and non-prov. – DonQuiKong Jan 19 '17 at 7:42
  • similar to the link you shared, this post says " The rights of the patent owner start from the date of publication (generally 18 months after filing the patent application) of the patent application. However, a patent owner can file a patent infringement suit only after the patent is granted. " - Is this pre-AIA or AIA First to Fil e act? please assist me – KSR Jan 19 '17 at 8:55
  • In what way do you think the two links you posted contradict each other? To me they both seem to say that publication provides provisional rights. – Maca Jan 19 '17 at 9:15
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Will I then be eligible for infringement damage, after 31-Dec-2019 for the infringement made on April-01-2018?

No.

Provisional rights only apply to acts that occur after publication (30 May 2018 in your example — assuming the requirements for provisional rights have been satisfied).

However, the act you mentioned occured on 1 Apr 2018. This is before publication (30 May 2018). As such, there is no scope for provisional rights (and thus you would be entitled to no damages for these acts).

On this, it is irrelevant whether or not you have a provisional application, when the provisional application might have been filed, and the quality or composition of that provisional application.

Is my assumption correct - that effective filing date is filing date of any patent application (PCT, PPA, NP) with claims?

Not quite. The term "effective filing date" relates to claiming priority or benefit.

In your example, the filing date of your non-provisional application is 31 December 2017. However, the effective filing date of your non-provisional application is 1 January 2017 (roughly a year earlier), because you claimed the benefit of your provisional application which was filed then.

For this, it doesn't matter whether or not the provisional application has claims.

And that after patent grant, inventor is eligible for receiving infringement royalty from the filing date of such an application (any application with claim/detailed description of invention)?

No: not from the filing date.

Infringement can only occur from the date of grant. Acts that occur before grant are not infringement. This is one reason that a patent applicant may want grant to occur quickly.

However, for acts that occur between publication and grant, you may have provisional rights. These are a lot more restricted, but provide you some protection before grant.

However, after filing but before publication, you have no rights whatsoever. Anyone could freely use your invention. This is sensible: since your application has not published, nobody else knows about it and therefore could not take any steps to avoid it.

  • If this is true (as I find in many other supporting documents), why even file a provisional? I could have just filed for a Non-Provisional. As it is, Provisionals will not get published, its only after 6 months of NP(claiming priority of provisional) will the application get published. So, if i was filing for a NP as my 1st application, my application gets published 18 months from then. If i was filing for a provisional - 12 months from then I would have to file for a NP and 6 months from then my NP gets published. – KSR Jan 19 '17 at 9:35
  • Either way 18 months to publication and infringing rights starts after publication. Where is any benefit or "20+1" benefit I am hearing from everybody. I do not see any benefit. – KSR Jan 19 '17 at 9:36
  • @reindeer The 20 year patent term starts from when you file the non-provisional (whether or not a provisional is involved). Thus if you file a provisional, it gives you an extra year (the +1) in which to file the non-provisional (the 20). However, if your first filing was a non-provisional, the 20 years starts ticking immediately. Does that make things any clearer? – Maca Jan 19 '17 at 9:38
  • @reindeer Moreover, it is exceedingly rare for anyone to sue for damages over patent infringement anyway (due to the excessive cost of doing so), so when damages start doesn't really matter for most people. – Maca Jan 19 '17 at 9:40
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    @reindeer That's indeed one benefit. A provisional is also a good way to defer costs by a year (which may well be useful): you'll still have to pay the search fees, but this will be 1 year later. But, at the risk of getting on a soapbox and going off-topic: many books, blogs and other sources mislead private inventors about provisionals, and it is so frustrating to see: they're a fair way to achieve some small benefits, but they do not fundamentally change the practice of patents. – Maca Jan 19 '17 at 9:54

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