Recovery of a reasonable royalty for patent infringement that occurred prior to the issuance of a patent

February 29, 2016

 

By George H. Spencer,  Counsel,  Roberts Mlotkowski  Safran & Cole, PC

It is of interest to note that  a patent owner can, under certain circumstances, recover a reasonably royalty for the infringement  of a patent  that occurred before the patent was issued. The applicable period begins with the date when an  application for the patent was published, or the date when an international application filed under the  Patent Cooperation Treaty was published in English,  or the date when a translation of a non-English language version of the international application was received by the United States Patent and Trademark Office.

Here it is important that the invention claimed in the patent be identical to the invention as claimed in the published United States application or the international application and that the infringer had actual notice of the published application. If the published international application was not in English, the applicable date is when  the infringer had a translation.  Also, the right to obtain a reasonable royalty is available only if an infringement action is filed not later than six years  after the patent has issued.