Provisional Patent Rights

Posted Tuesday, October 07, 2008 by Jim Ruttler.

Not to be confused with provisional patent applications, provisional patent rights permit a patent holder to recover a reasonable royalty for the period of time while the application was pending. This is important because patent applications can take a couple of years to issue and they are not enforceable until they do issue. These provisional patent rights therefore allow the patent holder to be compensated for ‘infringement’ that occurred before the patent issued.

However, provisional patent rights are very narrow. They require that the application be published, that the alleged infringer have actual knowledge of the published application, and that the claims from the published application be substantially identical to the claims of the issued patent. The requirement for substantially identical claims is very difficult to meet because claims are often amended during prosecution to obtain allowance. Furthermore, even if all three requirements are met, the award of damages is limited to that of a reasonable royalty, which is often much less than lost profits.

In short, given the limited availability of provisional patent rights, it may be more desirable to file a petition to accelerate examination of the application. This will result in an issued and enforceable patent more quickly.

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