Is a pending patent application ever more than a toothless, paper tiger? Yes! In some narrow instances, an inventor may eventually collect from people who copy their invention before the related patent issues. Provisional rights give an inventor the ability to win an infringement case against infringers who copy their invention before a patent covering the invention issues, if they satisfy all the elements listed in 35 USC §154(d).
Normally, an inventor cannot successfully sue someone who is infringing their patent (e.g. making or selling the new invention described and claimed in a patent) before the patent is issued by the patent office. An inventor may be able to successfully sue someone for patent infringement before the application has issued as a patent IF and ONLY IF they can clear the following hurdles:
- The application must have been published by the USPTO,
- The infringer has actual notice of the patent application while they are infringing, and
- When the patent issues, its claims are substantially identical to the claims in the application the USPTO published.
1. A published application
The USPTO publishes applications ~18 months after they’re initially received. In some cases, the inventor may request non-publication, which would completely bar them from exercising their provisional rights.
An inventor may also request immediate publication when they initially send in their patent application. This may be a good idea where the inventor has already identified third parties that are copying the inventor’s device. This leg of the provisional rights stool is often the easiest to satisfy because, as an inventor, all you have to do is wait for the application to issue.
2. Actual Notice
There are a lot of brilliant people in the world, working on a lot of cool stuff. Occasionally, two or more people come up with the same brilliant concept, device, story, or philosophy at the same time. Think Newton and Leibniz inventing Calculus at around the same time, or Alexander Graham Bell and Antonio Meucci inventing the telephone independently. Sometimes, two people truly do independently create the same innovation at around the same time, with no knowledge of the other person’s progress or breakthrough. In order to avoid punishing innocent creation before a patent has issued, a second creator or user of an invention must actually be aware of the inventor’s patent application.
In some instances, it may be a good idea for an inventor to send the second creator or user a letter detailing their invention, referencing the patent application, and explaining how the second person seems to be infringing the invention in the application.
3. Substantially similar issued patent
Finally, when the inventor’s patent issues, it must be very similar or the same as the patent application the second creator/user was aware of. For example, if the original, published patent application describes and claims an invention with the elements A, B, and C, the issued patent (approved by the patent office) must also cover an invention with the elements A, B, and C. This is an important step because sometimes in order to have his application approved by the patent office, the inventor must narrow their claimed invention by adding an additional element, like element D. If the patent that issues only covers devices with all four elements, A, B, C, and D, the issued patent would not be substantially similar to the published patent application and a claim based on provisional rights would not be successful.
In summary, as a general rule, an inventor’s rights to their patent do not vest until the patent has been examined by the patent office and actually issues. In the narrow circumstances described above, an inventor may successfully sue for patent infringement that occurs before the patent issues under the provisional rights statute, 35 USC §154(d).
For more information on provisional rights, check out patentlyo!