Provisional Patent Rights – An Underutilized Protection

Historically, there was almost nothing that could be done if a competitor copied your idea while a patent application is pending. Under a 1999 revision to the patent laws, however, a patent applicant can seek a reasonable royalty for sales of goods and services that are covered by a claim of a subsequently issued patent. These are known as “provisional rights,” because no action to recover can be brought until after the patent actually issues.

The patentee must prove that the accused infringer had actual notice of the published patent application. The fact that the published application is available through the PTO’s website or other commercial databases is insufficient. The patentee must also demonstrate that the claims that ultimately issue are substantially identical to the claims as published in the application. If you had to amend the claims, you would not be able to obtain provisional rights stemming back to the publication date. But an applicant can request republication to correct errors in the initial publication, to publish amendments to the specification or claims, or to publish replacement drawings.

Notify the putative infringer and provide a copy of the application. Develop a record of amendments made to clarify claim language rather than change claim scope. Upon making substantive amendments, have the application republished, and provide a copy of the republished application to the infringer.

These steps should serve to dissuade copiers, and provide for damages for the time between publication and issuance.