by Bruce D. Sunstein, Timothy M. Murphy and Robert M. Asher
With all of the changes to the patent system arising from the decisions of the U.S. Supreme Court and the Court of Appeals for the Federal Circuit, it’s helpful to go back to basics and to contemplate the fundamentals of patent law in view of these decisions.
Below, we answer some frequently asked questions about patents. This summary is provided for informational purposes only, and does not constitute legal advice. Any specific question about patent law should be directed to an attorney in our Patent Practice Group.
What is the significance of a patent being published?
As of November 29, 2000, the United States Patent and Trademark Office began publishing patent applications. Typically, publication of an application will take place 18 months from the earliest priority date for the application. If secrecy of the invention is important, an applicant can avoid publication by submitting a request upon filing the application and certifying that the invention has not and will not be the subject of an application in another country. If the applicant later decides to file in a foreign country or internationally under the Patent Cooperation Treaty, the applicant must notify the U.S. Patent and Trademark Office within 45 days.
The publication of an application provides the patent applicant, for the first time, with the ability to go after damages corresponding to a reasonable royalty for patent infringement occurring prior to patent issuance. These are called provisional rights. Provisional rights are only available once the application issues as a patent. A further limitation on obtaining such pre-issuance damages is that actual notice of the published application must have been provided to the infringer and the infringed patent claims must be in the issued patent and be substantially identical to claims in the published application. Anyone receiving a notice of a published application should contact a patent attorney who can evaluate the matter of infringement, follow the continued prosecution of the application in the Patent Office and determine the advisability of a clearance opinion. A patent applicant interested in securing provisional rights may want to request early publication of the application to start the damages period sooner.
The publication of applications should make the examination of applications more comprehensive. The patent examiners will have easier access to a much larger database of recent prior art. A published application will be prior art as of its earliest filing date in the Patent Office. (More)
As of November 29, 2000, the United States Patent and Trademark Office began publishing patent applications. Typically, publication of an application will take place 18 months from the earliest priority date for the application. If secrecy of the invention is important, an applicant can avoid publication by submitting a request upon filing the application and certifying that the invention has not and will not be the subject of an application in another country. If the applicant later decides to file in a foreign country or internationally under the Patent Cooperation Treaty, the applicant must notify the U.S. Patent and Trademark Office within 45 days.
The publication of an application provides the patent applicant, for the first time, with the ability to go after damages corresponding to a reasonable royalty for patent infringement occurring prior to patent issuance. These are called provisional rights. Provisional rights are only available once the application issues as a patent. A further limitation on obtaining such pre-issuance damages is that actual notice of the published application must have been provided to the infringer and the infringed patent claims must be in the issued patent and be substantially identical to claims in the published application. Anyone receiving a notice of a published application should contact a patent attorney who can evaluate the matter of infringement, follow the continued prosecution of the application in the Patent Office and determine the advisability of a clearance opinion. A patent applicant interested in securing provisional rights may want to request early publication of the application to start the damages period sooner.
The publication of applications should make the examination of applications more comprehensive. The patent examiners will have easier access to a much larger database of recent prior art. A published application will be prior art as of its earliest filing date in the Patent Office. (More)
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