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?

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

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.