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IP Strategies —August 2003
VEDDERPRICE
If an application is published, the Act grants limited
provisional rights to the applicant. According to the Act,
these limited provisional rights give the applicant the right
to a reasonable royalty against one who makes, uses,
offers for sale, sells, or imports in the United States the
invention as claimed in the published application, subject
to the following conditions. First, although the Act
provides for a reasonable royalty beginning on the date
of publication, no explicit provisions for lost profits or
any other type of damages as a result of patent
infringement are established in the patent statute.
Second, in order for reasonable royalties to begin to
accrue as of publication of the patent application, the
claims in the published application must be “substantially
identical” to the invention as claimed in the issued patent.
The meaning of “substantially identical” is not defined
in the statute. It may be that modification of a published
claim that substantively changes its scope will not be
considered to be substantially identical with an issued
claim. Therefore, in order to maximize the potential
provisional rights, applicants should attempt to have a
range of claims in the published application, e.g., the
range of claims should include claims having a broad
scope and claims having a narrow scope. This will
provide the applicant with a better chance of having some
of the published claims substantially identical to an
issued claim since a published narrow claim may issue
without modification even when a published broad claim
requires substantial modification. The Act also permits
applicants to redact portions of an application for
publishing. This enables an applicant to prevent
publication of material that will not be published
internationally.
The third condition that must be met in order for
provisional rights to be available is that the potential
infringer must be given “actual notice” of the published
application. What is required to provide “actual notice”
is not defined in the Act. However, the legislative history
suggests that the “actual notice” requirement is similar
to the actual notice requirement under 35 USC §287(a)
that the Federal Circuit has held requires that the patent
owner provide an affirmative communication of a
specific charge of infringement by a specific accused
article or process. Therefore, it is unlikely that merely
sending a copy of the published application, without more,
would satisfy the actual notice requirement of the Act.
Additionally, if the patentee is aware of a potential
infringer, the patentee may file a petition to make special
at the time of filing of the patent application to seek early
examination of the application and prompt issuance of a
patent, which potentially could occur before the eighteen
month period for publication.
The fourth condition is that the right to obtain a
reasonable royalty is only available if the infringement
action is brought within six years after the patent is issued.
This is consistent with 35 USC §286 that prevents the
recovery of damages for any infringement that was
committed more than six years prior to the filing of the
claim for infringement. Since the provisional rights mature
only when the patent issues, the ability to enforce these
rights for six years is analogous to the right to obtain
damages for a particular past act of infringement.
The Act’s provision requiring the publication of U.S.
patent applications is a significant departure from the
prior law by changing the point in time for calculating
the accrual of reasonable royalties. Although the effect
of the law is tempered by requiring the issued claims to
be substantially identical to the published claims, and
by requiring actual notice under the Act, the accrual of
damages beginning with publication provides significant
new options for patentees to expand their patent
enforcement and licensing programs.
VEDDER PRICE ADDS NEW
IP LAWYER
MARK A. DALLA VALLE
Mark A. Dalla Valle, formerly a partner with the law
firm of Wildman, Harrold, Allen & Dixon has joined the
growing Intellectual Property practice as a Shareholder
at Vedder Price.
Mr. Dalla Valle counsels clients in the field of
patents, trademarks and copyrights, concentrating in
serving technology clients, particularly those involved
in the design, manufacture and sale of electronic devices,
circuits and systems. He has written, filed and prosecuted
hundreds of patents in many areas of technology including
semiconductor fabrication and design, radio frequency
circuits and systems, fiber optic signal processing,
telecommunications circuits and systems, analog and
digital circuits and systems, and computer hardware and
software. He also provides validity and infringement
IP Strategies —August 2003
VEDDERPRICE