Friday, November 04, 2005

Enforceability of Published Provisional Patent Applications

As we covered yesterday, a provisional patent application was published covering a storyline. Several other sources picked this up and pointed back at us, including slashdot, and there was quite a bit of discussion at these sites over the issue of whether the applicant can begin enforcing his patent rights as of the publish date.

Over at the Patent Prospector we get an authoritative answer: yes, the patent application is now enforceable. Quoting from Iskra:
Provisional patent rights and the 18 month publication of applications arose from the American Inventor’s Protection Act (AIPA - 11.29.00). Before AIPA was enacted, the applicant had no rights until the patent was granted. Contrastingly, amended 35 U.S.C. §154(d)(1) (thanks to AIPA) now provides a right to obtain a reasonable royalty from any person who infringes the invention during the period that begins upon publication and ends when the patent actually issues.
The ways in which enforcement of these claims would restrict your right to create are almost innumerable. Want to do something about it? Write your representatives.

8 Comments:

Anonymous Anonymous said...

Jesus, misinformation abounds today. If you reread your source (or the statute), you see that no liability attaches until the patent issues. They only have "back-damages." The assholes at Knight & Assoc. will never get a penny, because their patents will never issue.

1:27 PM  
Anonymous Anonymous said...

Plus, it's not a "provisional patent application": those do not get published.

1:39 PM  
Blogger Jackson Lenford said...

Well, I'm certainly not a lawyer (which is why I rely on others who are lawyers to sort this stuff out for me), but the law cited by Patent Prospector certainly seems at least understandable to me on this one:

(d) PROVISIONAL RIGHTS.-

(1) IN GENERAL.- In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued-

(A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or

(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and

(B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language.

(2) RIGHT BASED ON SUBSTANTIALLY IDENTICAL INVENTIONS.- The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.

(3) TIME LIMITATION ON OBTAINING A REASONABLE ROYALTY.- The right under paragraph (1) to obtain a reasonable royalty shall be available only in an action brought not later than 6 years after the patent is issued. The right under paragraph (1) to obtain a reasonable royalty shall not be affected by the duration of the period described in paragraph (1).


If this doesn't mean that they have the right to request royalties (assuming the patent is granted), what does it mean?

1:46 PM  
Anonymous Scott said...

"If this doesn't mean that they have the right to request royalties (assuming the patent is granted), what does it mean? "

It does, but many would bank on the patent never being issued.

In fact, I would bet that somewhere in the annals of science fiction short stories, somebody could find an example of prior art in the specific plot claimed by this time tomorrow.

7:11 PM  
Anonymous Anonymous said...

"It does, but many would bank on the patent never being issued"

Yeah, well many would have banked on no patent being issued for the 'business practice' of selling mixed cereals (Cheerios and Raisin Bran, Fruit Loops and BooBerry, etc).

Never understimate the stupidity of the Patent Office.

7:04 PM  
Blogger Matt Baldwin said...

I'm with anonymous ;) Never trust that this just won't happen because it doesn't make sense. If there's enough weight and money behind it, then it'll happen and then we'll be forced to take it to Congress, Supreme Court, whomever. For some reason, I keep picturing my lit professors as expert witnesses and remembering the story Woody Allen wrote about Literature prostitutes. :)

-matt

10:55 AM  
Blogger Dave said...

Anonymous is correct. Misinformation does abound. A correct analysis is posted at www.davesdistrict.com.

7:06 PM  
Blogger Jackson Lenford said...

A correct analysis is posted at www.davesdistrict.com

Hey Dave. I'm certainly interested in correcting any errors in my understanding, and I'll defer to reason and authority when I see it. In fact, that's why I deferred to the link in the post -- Iskra is not a practicing patent attourney, but he has passed the bar. Andrew Knight is a practicing patent attourney, and he is the one claiming, in his own press release, that he can now "assert publication-based provisional patent rights against anyone whose activities may fall within the scope of his published claims" (and BTW, I really hate the fact that I just deferred to Knight :) ).

I am not a patent attourney, but these guys are experts. What are your qualifications? Or forget about qualifications; convince me why your analysis about 'back-royalties' (not mentioned in the code) is correct. The qualification in (2) is entirely up to the one filing the application, so I find little reason to believe that one who wished to collect royalties would make substantial changes to patent application while pending.

I'm really not trying to be stubborn about this, but here we are. I've got two lawyers that say royalties are collectable, and none (so far) that say they aren't. But let's say, hypothetically, that the two lawyers on my side are complete nutjobs.

Are there any sane lawyers in the house that can break this logjam?

8:27 PM  

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