Home > Research Legal Advice > Intellectual Property > If I file for a Provisional Patent Applications, can I sue another perso...
Asked 12 months ago - Santa Ana, CA
FlagFor example, if I file a Provisional Patent on July 1, 2012 and on September 1, 2012, somebody takes my idea and start commercializing it. As soon as my patent is issued, can I legally sue the person for infringing on my idea?
Once your patent issues you can sue an alleged infringer.
The question is whether you can recover monetary damages for the infringing sales that occurred before the patent issued. The rule is that you can recover those damages for the infringing sales made after your NON-provisional was published [which, unless you tell the Patent Office otherwise, will happen 18 months after the application is filed] if, and ONLY if, the claim(s) in the patent as filed are "substantially identical" to the claim(s) in the issued patent that you allege have been infringed. It is often the case that the claims as filed are significantly amended [even after publication] and so are NOT substantially identical to the claims as issued -- so, in that case, you can only sue to recover damages for sales made after the patent issues.
You can only sue someone for patent infringement after you have received an issued patent. However, your provisional application cannot become an issued patent. You will need to file a non-provisional application for it to become an issued patent.
Michael
www.accessipgroup.com
You can sue this person, but you cannot collect damages until the date that your patent application is first published. For example, if you file your utility application on June 30 2012, your application will be published 18 months later on December 30, 2013. Assuming that your patent eventually issues with claims that cover the activities of the infringer, you could only sue for damages beginning December 30, 2013.
This is one of many reasons why provisional patent applications are often a bad idea. They buy you an extra year to file your utility application, but in many circumstances this extra year is worth nothing---what matters is getting your real patent issued. Until your patent issues, you have no right to sue anyone for anything. It currently takes 2-4 hours for the patent office to review a utility patent application. Thus, when you file a provisional, the time that it takes to get a patent ordinarily expands from 2-4 years to 3-5 years. The term of a patent is 20 years from the date of filing, but because technology changes so fast, getting an extra year at the end by filing a provisional may not be worth much. Rather, it is often more important to get the patent issued as soon as possible so that you can begin to sue for damages and/or license the patent. This is one of many reasons why I sometimes discourage clients from filing provisional applications.
You can sue the infringer after your patent issues and ask for an injunction and damages. You are entitled to reasonable royalty damages after your utility application is published, if you make the infringer aware of your patent application. A patent will only issue from a utility application. You have to convert your provisional application to a utility application within 1 year of filing.
A provisional application does not get examined and does not issue into a patent. It is a place-holder application to establish a filing date (for reasons your own patent attorney can explain).
If you convert your provisional application into a regular, non-provisional application (a utility application), then it will get examined and might issue into a patent.
Once your patent issues, your exclusionary rights begin. At this point, if someone is making, using, selling, etc. something that is covered by the issued claims of your patent, then you could sue them and it might be possible to recover for damages that happened starting when the non-provisional application was published. Of course, there is a LOT more that goes in to determining whether to sue someone and whether you can recover for pre-issuance damages.
Best of Luck!
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