Provisional Rights; Pre-Issuance Reasonable Royalty (Sec. 154(d))

  • BASICS: Right to reasonable royalty from any person who, during the period (no matter how long) from publication of the application to its issuance, makes, uses, offers for sale, or sells in the U.S., or imports into the U.S., the invention as claimed in the published application, or if claims a process, uses, offers for sale, or sells in the U.S., or imports into the U.S., products made by that process; if (1) action brought not later than 6 years after the patent issued, (2) person had actual notice of that published application, and (3) “the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.” 35 U.S.C. § 154(d).
  • Requires Actual, Not Constructive, Knowledge Of Published App.: See Rosebud (Fed. Cir. 02/09/16) (aff’g Summ. J. of no “actual notice”: “actual notice” requires actual knowledge of the published app. itself not merely constructive knowledge (e.g., based on knowledge of ancestor app.), but, unlike Sec. 287(a), does not require an affirmative notification by the published applicant).
  • Claim May Have Same Scope Despite Wording Differences: Innovention Toys II (Fed. Cir. 04/29/15) (non-precedential) (aff’g jury verdict of pre-issuance reasonable royalty, at least some issued claim had same scope as a published application claim despite word differences in the claims.)
  • TIPS: