Infringement Damages While Patent Pending

[@johnferrellesq.]

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[@daclawlife]

Good Day John You’ve been super informative regarding patent rights. Thanks for sharing your knowledge. Many Thanks Georgel

[@johnferrellesq.]

George, thank you for the kind reply. Warmest regards. -john

[@neatmachine]

Thanks for a very informative video. When filing a non-provisional application, I believe you can elect not to publish at 18 months. If so, what are the advantages and disadvantages of publishing or not publishing? Thanks!

[@johnferrellesq.]

Thank you for your question regarding the publication of non-provisional patent applications at 18 months. You are correct that, when filing a non-provisional patent application in the United States, you have the option to request **non-publication**. Under U.S. patent law (35 U.S.C. § 122(b)), applicants can file a non-publication request at the time of filing the application. By doing so, the application will not be published 18 months after the earliest filing date. However, this election is only available if the invention will not be filed in foreign jurisdictions that require publication, such as under the Patent Cooperation Treaty (PCT) or in individual foreign countries. If a non-publication request is made, and the application is later filed internationally, the U.S. applicant must notify the USPTO of the foreign filing within 45 days, or the application may become abandoned. Advantages of Allowing Publication at 18 Months: The application will be published and become part of the public domain. This disclosure can help establish a **date of prior art** against later-filed applications from competitors. Publication informs competitors and the industry about your invention. This can demonstrate technological leadership and serve as a deterrent to others from pursuing overlapping inventions. Published applications can be cited by examiners during prosecution, potentially influencing the scope of your claims positively. Publication can facilitate early interest from potential licensees, partners, or investors, as they gain access to the disclosed invention details. Publication establishes a basis for **provisional rights** under 35 U.S.C. § 154(d), allowing you to seek reasonable royalties from infringers for activities occurring after publication but before issuance (if the issued claims are substantially similar to the published ones). Advantages of Non-Publication: Electing non-publication keeps the details of your invention confidential if the application does not result in an issued patent. This can be advantageous if you are concerned about disclosing sensitive business strategies or technology prematurely. Competitors will not have access to your application, which may prevent them from designing around your invention or preemptively filing related applications. If you decide to abandon the application for strategic or business reasons, the invention remains undisclosed. Non-publication aligns with a trade secret strategy, allowing you to maintain the invention as a trade secret if you do not pursue a patent. Disadvantages of Non-Publication: Without publication, you forgo the opportunity to claim provisional rights for pre-issuance damages from infringers. Non-publication limits your ability to showcase the invention to potential licensees, partners, or investors during the pendency of the application. A non-publication request precludes filing in jurisdictions requiring publication unless the request is rescinded. If competitors independently develop and file similar technology, they could secure patents for overlapping inventions before your application issues. The decision to publish or request non-publication ultimately depends on your business strategy, the competitive landscape, and whether you intend to file internationally. If confidentiality is critical or if the invention aligns with a trade secret strategy, non-publication may be the right choice. Conversely, if public disclosure, licensing, or establishing prior art are priorities, allowing publication is typically advantageous. I hope this helps. Warmest regards, -john

[@JamesMilliron]

great video. thank you

[@johnferrellesq.]

James, thank you for watching my videos and for the kind words. It’s so great to have you as part of our entrepreneur community. What kind of products do you work on? Please let me know if there are any other videos you would like to see me make. Warmest wishes. -john

[@joluda1322]

What if both parties have a pending patent, how does that play out?

[@johnferrellesq.]

Hi Jo, I am not quite sure what you are asking,. Could you please provide a bit more context? Warmest regards,-john

[@0xunknown336]

@@johnferrellesq. I think he meant, what if both parties Indiviual A and Individual B did apply for a patent for almost similar products, and they are both pending, so what would happen then?

[@johnferrellesq.]

@@0xunknown336 Whoever applies for the patent first gets the patent. In the U.S. we say there is a race to the patent office. Thank you so much for watching my video and leaving your comment. I am very grateful to have you here 😊 -john

[@mst3kwookie]

If you fail to send notice to the infringer while in the application phase, damages only begin to accrue from the issue date of the patent?

[@johnferrellesq.]

@mst3kwookie, yes, the statute requires that the infringer must have actual notice of the published application in order to be liable for infringement, prior to the patent being granted. There are other ways to show actual notice, but the safest way to prove actual notice is to send the infringer a copy of the published application. Does this answer your question? -john

[@John_English_yt]

@@mst3kwookie So glad to hear. Warmest wishes for the new year. -john

[@monunisha44]

awesome 👍

[@johnferrellesq.]

Thank you! -j