1

Person A has a patent in India, granted in 2000. A applies for protection in the US in 2005 and gets granted in 2010. Firm B and C were using the patent from 2004 and 2006 respectively to manufacture and sell a product in the US.

  1. From which year will A be reimbursed given that she has been granted the patent in 2010 in the US?
  2. What will happen if B stops production in 2009?
  3. What will happen in B stops production in 2011?
2

B will invalidate A's patent with the indian patent as prior art because a priority claim can be made only for 12 months so the US application can't claim priority to the indian application and therefore has 2005 as the filing date.

B could also invalidate A's patent by proving that they had the product in public use prior to the filing date of the patent.

B could claim a "prior use" exception and not pay royalties (pre AIA that's pretty much theoretical).


Other than that, a valid patent can claim royalties for the time between publishing of the application and grant under some circumstances. See for example here:

This provisional right comes with two caveat [...]

The invention as claimed in the patent must be “substantially identical” to the patent as claimed in the published patent application. 35 U.S.C. § 154(d)(2) [...]

The second caveat concerns notice. The statute requires the infringer to have “actual notice” of the published application. 35 U.S.C. § 154(d)(1)(B). [...]

Commentators agree that based on congressional intent, the courts will likely require notice from the applicant. See, e.g., 82 JPTOS at 748; Patrick J. Birde, Nicholas J. Nowak, Analyzing Provisional Rights for Patent Applicants, 9 No. 12 Intell. Prop. Strategist 1 (2003); Terence P. Ross, Intelectual Property Law: Damages and Remedies § 3.08 (2004); Brian J. Massey, Reasonable Royalties for 18 Month Patent Publication Infringement: An Unreasonable Remedy for Smal Businesses, 8 J. Small & Emerging Bus. L. 87, 103 (2004).

-> If B infringed only while the patent was still an application (but not before filing), A won't be able to enforce royalties or punishment as high/strong as if B infringed afterwards, but will be able to enforce royalties nonetheless.

Therefore, if B stops production before the grant, they will still "be punished" (with royalties) but that should be less than if they infringed a granted patent.

  • Thank you very much for the elaborate clarification. Just one more question, why will the royalties/punishment be less for a pending patent than a granted patent? – Satyaki Chakravarty Mar 28 '18 at 11:44
  • @SatyakiChakravarty fairness, the infringer couldn't have been sure the patent would be granted/granted in that form. – DonQuiKong Mar 28 '18 at 12:29
  • can you please send me a reference to the fairness argument? It will be helpful since I am writing a paper and references are always good for papers. – Satyaki Chakravarty Mar 29 '18 at 2:12
  • @SatyakiChakravarty I don't have one, but I suppose the congressional reasoning for the word "reasonable" in 35 U.S.C. § 154(d) would be the right place to go as it would constitute the original source. – DonQuiKong Mar 29 '18 at 6:35
  • @SatyakiChakravarty alternatively: scholar.google.de/… – DonQuiKong Mar 29 '18 at 6:37

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