What are my rights while patent pending?

A frequently asked question is whether an applicant (i.e., one who has filed a patent application) can stop copycats and would-be infringers while the patent application is pending. The answer is no. An IP owner does not have patent rights to enforce against competitors until the patent application matures into an issued patent.

Technically, there is no infringement of a patent application. Infringement can only occur when a patent is granted.

Why can’t patent applications be infringed?

Keep in mind that patent claims in a pending application are in a state of flux. Claims are typically amended repeatedly during the normal prosecution of a non-provisional utility application, particularly in response to Office Actions containing prior art rejections. Therefore, the scope of pending claims on a given day (or month or year) may change drastically as the claims undergo amendments to overcome the patent examiner’s rejections.

It would not be fair to the general public to assume that an IP owner with a pending patent application is instantly allowed to stop others when the validity of the pending claims have not been examined.

How to maximize potential recovery while patent pending

An inventor or owner of a pending application can take certain steps to maximize potential recoverable damages by sending the copyist/competitor a copy of the published patent application. If the claims that are ultimately granted are substantially identical to those in the published application, then the patent owner would be able to back-date their damages to the date the published application was sent to the infringer.

Under 35 USC Section 154(d), a patent owner may be able to recover a reasonably royalty counting from the date the infringer received actual notice of the published patent application if the claim infringed in the issued patent is substantially identical to the invention claimed in the published patent application.

You would still need to wait until your patent application is granted before you can take legal action against an infringer, but you can at least put yourself in the best position to maximize your potential recovery.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com