Introduction
The patent procurement process is not an easy road. The importance of prior art to claims’ patentability, the ability of patented claims to withstand challenges during the patent’s lifetime, and the ability of the patentee to prevail in an infringement lawsuit cannot be overestimated. This blog uses the example of provisional rights in pending patent applications to demonstrate the importance of prior art throughout the patent procurement cycle and patent’s lifetime.
Can a Patent Applicant Sue a Competitor for Infringement of the Invention Disclosed in a Pending Patent Application?
No. However, according to 35 U.S.C. § 154(d), if a patent issues on a published application, the patent owner has the right to obtain reasonable royalties, from others, who with actual notice of the published application, made, used, sold, offered to sell, or imported the invention as claimed in the published application before the patent was granted. This provision means that patent owners who sue for infringement of granted claims may be able to seek damages for any infringement of the claims occurring during both the period the patent application was still pending and since the patent was granted.
Under 35 U.S.C. § 122(d), patent applications will be published 18 months following the application’s filing date or the priority date claimed by an application unless the applicant makes a non-publication request. Most utility patent applications are preceded by a provisional patent application (PPA) to get a patent application filing date which will apply to the future utility patent application (UPA), if any. That is, the UPA will claim priority to the originally filed PPA. The UPA must be filed within exactly one year of the PPA if the applicant hopes to secure any patent rights.
A UPA that claims priority to a PPA will be published 18 months from the PPA’s filing date. This publication date very often occurs before the UPA has actually been examined by a patent examiner. Following publication, the UPA and all of the application’s prosecution documents become publicly available. For UPAs having no priority date to a PPA, the publication date is 18 months from the UPA’s filing date.
The applicant may request non-publication of the UPA where the applicant does not plan to file any foreign (non-USPTO) application(s). Where the applicant is considering trade secret protection in lieu of patent protection but still filed the UPA to protect any potential patent rights, a non-publication request may be desirable providing additional foreign patent applications are not involved. In these cases, the applicant will not have provisional patent rights.
The above-referenced statute provides a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim under the following circumstances:
- Actual notice is given to a third party by the applicant which may be in the form of a cease-and-desist letter; and
- A patent actually issues from the application with a substantially identical claim (s) to the alleged infringed claims.
Although such a course of action by the applicant will put the potential infringer on notice that they could be sued at a later date for infringement, the notice could also open a can of worms for the unwary patent applicant. For example, any third party, e.g., a competitor, can submit prior art documents against a patent application. Such submissions are known as Third Party Submissions under 37 C.F.R. § 1.99. Third Party Submissions must be filed with the USPTO within a short 2 month-period from the date of publication of the application or prior to the mailing of the notice of allowance of patent application claims, whichever date is earlier. A patent applicant may thus wish to forego sending and notice until 2 months have passed following publication of the application.
Granted patent claims themselves may be subject to invalidation under 37 C.F.R. § 1.501 which allows any person, individual, corporate or government entity, real parties of interests and even persons without a real interest to submit prior art in the form of patents or patent publications to the USPTO. The submitted documents must have a bearing on the patentability of any claim in the issued patent. Persons commencing a patent infringement lawsuit should also be aware that defendants in an infringement lawsuit often attempt to invalidate patent claims on the basis of existing prior art as of the application’s priority date.
The Importance of Prior Art Searches. As the foregoing demonstrates, prior art plays a critical role in obtaining a patent, infringement lawsuits, and patent longevity. The USPTO examiner herself will conduct detailed prior art searches to determine if a new invention disclosed in a UPA (and design patent applications) meets the requirements for patentability and may rely on third-party submissions. To maximize the possibility of getting approved patent claims and prevailing and being awarded damages in a patent infringement lawsuit, applicants should conduct prior art searches at least before filing a UPA. Such a step is also suggested before any notice under 5 U.S.C. § 154(d) is sent. Being forewarned is being forearmed in the arenas of patent procurement, patent rights longevity, and patent infringement litigation.
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THANK YOU FOR YOUR INTEREST IN THIS BLOG. THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.
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Susan Dierenfeldt-Troy
