At what point in time do damages begin for patent infringement?

Typically, a non-provisional patent application is published eighteen (18) months after it is filed.  If someone is infringing a patentee's invention, damages based on a reasonable royalty rate begin on the publication date. 

However a patentee can not file a lawsuit in court until the patent issues.

The statute that governs the damages starting at the publication date, is 35 U.S.C. 154 - Contents and terms of patent; provisional rights.


(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).


(4) REQUIREMENTS FOR INTERNATIONAL APPLICATIONS-


(A) EFFECTIVE DATE.- The right under paragraph (1) to obtain a reasonable royalty based upon the publication under the treaty defined in section 351(a) of an international application designating the United States shall commence on the date of publication under the treaty of the international application, or, if the publication under the treaty of the international application is in a language other than English, on the date on which the Patent and Trademark Office receives a translation of the publication in the English language.


(B) COPIES.- The Director may require the applicant to provide a copy of the international application and a translation thereof

Call Robert J. Sayfie with your patent or trademark questions, or visit http://www.sayfiepatents.com/.

What is prior art that can make my invention not-patentable?

Prior art is described at 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.  The statute recites:

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Call Robert at 1-888-468-0444 with your questions regarding patent or trademark law.  Or visit www.sayfiepatents.com.

How can I stop someone from importing my U.S. patented invention into the U.S.?

Answer: (1) sue them in Federal Court; or (2) File a complaint with the United States International Trade Commission (USITC).

A patent provides the patentee the right to prevent others from (1) making, (2) using, (3) selling, (4) offering for sale, or (5) importing the claimed invention.

Depending on circumstances, it may be more beneficial for a U.S. patentee to file a "337 Complaint" with the USITC.

A patentee should evaluate the different options available.

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Is a Method of Doing Business Patentable?

The recent United States Supreme Court decision in Bilski v. Kappos answers this question.  From that decision, the United States Patent and Trademark Office issued a guide for patent examiners.  The guide provides a list of factors that a patent examiner are to evaluate.   

Factors that weigh toward patentability are:

1.  Recitation of a machine or transformation, either express or inherent;
2.  The claim is directed toward applying a law of nature; and
3.  The claim is more than a mere statement of a concept.

Factors weighing against patentability are:

1.  No recitation or an insufficient recitation of a machine or transformation, either express or inherent;
2.  The claim is not directed to an application of a law of nature;
3.  The claim is a mere statement of a general concept.

Contact The Patent Law Office of Robert J. Sayfie if you have any questions, at 1-888-468-0444, or visit http://www.sayfiepatents.com/.

What Does Obviousness Mean With Respect To Patents?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. - Patent Laws

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

(b)

     (1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-
          (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
          (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

     (2) A patent issued on a process under paragraph (1)-

          (A) shall also contain the claims to the composition of matter used in or made by that process, or

          (B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.

     (3) For purposes of paragraph (1), the term "biotechnological process" means-

          (A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-

               (i) express an exogenous nucleotide sequence,
               (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
              (iii) express a specific physiological characteristic not naturally associated with said organism;

          (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

          (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

(c)
     (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

     (2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -

          (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

          (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

          (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

      (3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

the Supreme Court's decision on BILSKI

On Monday, 28 June 2010, the United States Supreme Court decided a case regarding the patentability of business method patents.  The case can be found at Bilski et al. v Kappos, 08-964.

The Court affirmed the Court of Appeals for the Federal Circuits rejection of a patent application regarding business method patents.

Claim 1 of the patent application recites,

"(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumers;
(b) identifying market participants for said commodity having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions."

The Court reasoned:

     In light of these precedents, it is clear that petitioners’ application is not a patentable “process.” Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”
     The patent application here can be rejected under our precedents on the unpatentability of abstract ideas.The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

Therefore, a business method that is known to the public, is probably not patentable, even if it is integrated with a computer program, or software.

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THE UNITED STATES' MOST UNAPPRECIATED ASSET - INNOVATION

Where would the United States be today without the innovations of:

1. Thomas Edison
          Thomas Edison patented over 1000 inventions include the phonograph, the incandescent light bulb, and the motion picture;

2. Samuel F. B. Morse
          His inventions include the telegraph and morse code;

3. Alexander Graham Bell
          His inventions include the telephone in 1876;

4. Henry Ford
          The automotive industry drove the American economy since it inception;

5. George Eastman
          He invented the Kodak camera;

6. Bill Gates and Steve Jobs
          Computers.

Many important inventions were invented or best produced in the United States.  The reason is that the U.S. constitution created the structure of our government.  The limits of the government provide free enterprise to grow by the incentive and fun involved in creating and inventing, and reaping the benefits of one's creation, generally through the U.S. patent system and international patent laws.

Where would the U.S. be had the above inventions been invented or primarily developed in another country?

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