Inventors often ask:  “When do my patent rights take effect?”  Or, “When can I sue a potential infringer?”  Regardless of how the questions are phrased, an inventor’s rights in a U.S. Patent are not enforceable until the patent issues.

However, an inventor can choose to have his application published 18 months after the priority date.  By doing so, the inventor may be able to claim provisional rights under 35 U.S.C. § 154(d).  This statute gives a party applying for a patent the opportunity to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent until the issuance of the patent:  (1) makes, uses, offers for sale or sells in the United States the invention claimed in the published application; (2) imports such an invention into the United States; (3) uses, offers for sale or sells in the United States products made by a process as claimed in the published patent application; or (4) imports into the United States products made by a process as claimed in the published patent application.  Provisional rights may only be asserted after the patent is actually granted and only when the claims of the issued patent are “substantially identical” to the claims of the published patent application. 

In applying the “substantially identical” standard, one must consider whether the scope of the claims is identical and not merely whether the words have been changed.  In a recent case, Pandora Jewelry, LLC v. Chamilia, LLC, 2008 U.S. District LEXIS 61064 (D. Md., August 8, 2008), the Court considered an amendment to the claims to overcome the Patent Office’s rejection based upon prior art.  While the Court stated there was no per se rule an amendment to a claim made to overcome a Patent Office rejection based on prior art precludes a finding of valid provisional rights, the Court did decide the claims were substantively changed from the claims published and thus no valid provisional rights existed. 

This case and other related cases present a quandary to patent applicants and their attorneys.  How does one draft application claims broadly enough to ultimately secure the full scope of patent rights available without running the risk of losing provisional patent rights?  One of my very first mentors used to tell me, “if you get a first action allowance and don’t have to amend the claims then you drafted the claims too narrowly.”  Yet under Pandora, any amendment could potentially destroy the provisional patent rights leaving the applicant with no protection after publication of the application until the patent is granted.

This quandary can best be resolved by striking a genuine balance in drafting the claims.  Some claims in an application can be drafted broadly enough, in the first instance, to capture the full scope of available patent rights even at the risk of amendment.  Other claims in the same application can be drafted more narrowly in the hope they will be allowed without amendment to preserve provisional rights.  The provisional rights can then be enforced against one practicing the invention of those narrower claims during the period between the publication and the patent grant.  Proceeding in this fashion requires either substantial skill or finesse in claim drafting or a significant budget since Patent Office fees are based on the number of claims in an application.  We, of course, try to rely on skill and finesse when possible.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com