Infringement - products in between priority and filing dates

[w***@aol.com]

If a feature of a product is covered by a claim of an issued patent where the date that product is made, sold or used is after the priority date but before the filing date of the patent, does that product infringe on that patent?

Thank you in advance ...

[Alun]

Post by w***@aol.com
If a feature of a product is covered by a claim of an issued patent
where the date that product is made, sold or used is after the
priority date but before the filing date of the patent, does that
product infringe on that patent?
Thank you in advance ...

No. In the US it has to be after the publication date, and if it's after
that but before the issue date, the remedies are limited to a reasonable
royalty, and dependent upon the claims of the published application
matching those of the issued patent.

Alun Palmer, US Patent Agent

[Tim Jackson]

On Sun, 26 May 2013 04:03:51 +0000 (UTC), Alun wrote...

Post by Alun

Post by w***@aol.com
If a feature of a product is covered by a claim of an issued patent
where the date that product is made, sold or used is after the
priority date but before the filing date of the patent, does that
product infringe on that patent?
Thank you in advance ...

No. In the US it has to be after the publication date, and if it's after
that but before the issue date, the remedies are limited to a reasonable
royalty, and dependent upon the claims of the published application
matching those of the issued patent.
Alun Palmer, US Patent Agent

To be clear, while you can't get anything for stuff that happens before
the publication date, you would be able to claim if the product
continues to be made, sold or used after that date. You can't take
legal action until the patent is granted, but the reasonable royalty can
potentially go back to the publication date.

[w***@aol.com]

In that case, I assume that the manufacturer has the right to perpetually continue making the product even if the product is covered by the claims in the issued patent? Are the intervening rights applicable here?

If I understand you (and Tim Jackson) correctly that, however, products that had not existed at all before the issue date covered by the claims in the issued patent would infringe. Am I thinking right?

Thanks ...

Post by Alun

Post by w***@aol.com
If a feature of a product is covered by a claim of an issued patent
where the date that product is made, sold or used is after the
priority date but before the filing date of the patent, does that
product infringe on that patent?
Thank you in advance ...

No. In the US it has to be after the publication date, and if it's after
that but before the issue date, the remedies are limited to a reasonable
royalty, and dependent upon the claims of the published application
matching those of the issued patent.
Alun Palmer, US Patent Agent

[Tim Jackson]

Post by w***@aol.com
In that case, I assume that the manufacturer has the right to
perpetually continue making the product even if the product is
covered by the claims in the issued patent? Are the intervening
rights applicable here?
If I understand you (and Tim Jackson) correctly that, however,
products that had not existed at all before the issue date covered
by the claims in the issued patent would infringe. Am I thinking
right?

No. As I said back in May, assuming your patent application is entitled
to an earlier priority date, you would be able to claim if the product
continues to be made, sold or used after the publication date. (In the
USA, the one-year grace period can be more important in practice than
the priority date.)

You can't take legal action until the patent is granted. But you can
then ask for an injunction to prevent further infringement. And
(subject to some conditions) you can claim a reasonable royalty for
infringements that took place after the publication date.

Unless of course the alleged infringer can show your patent is invalid
because of something done before the one-year grace period or priority
date.

[w***@aol.com]

Sorry, my bad. I omitted an important piece of criteria. I am assuming that this is only the case if the issued claims match the published claims as Alun said. If that is the case, can the product be continued to be made, sold or used if the product infringes on the issued claims but not the published claims?

Post by Tim Jackson
No. As I said back in May, assuming your patent application is entitled
to an earlier priority date, you would be able to claim if the product
continues to be made, sold or used after the publication date. (In the
USA, the one-year grace period can be more important in practice than
the priority date.)
You can't take legal action until the patent is granted. But you can
then ask for an injunction to prevent further infringement. And
(subject to some conditions) you can claim a reasonable royalty for
infringements that took place after the publication date.
Unless of course the alleged infringer can show your patent is invalid
because of something done before the one-year grace period or priority
date.
--
Tim Jackson
(Change '.invalid' to '.plus.com' to reply direct)

[Tim Jackson]

Post by w***@aol.com
Sorry, my bad. I omitted an important piece of criteria.
I am assuming that this is only the case if the issued claims match
the published claims as Alun said. If that is the case, can the
product be continued to be made, sold or used if the product
infringes on the issued claims but not the published claims?

The comparison between the issued claims and the published claims is
only relevant to the availability of damages for infringements between
the two.

After the patent is issued, it's simply a question of whether the
accused product infringes the granted claims, and whether the granted
claims are valid. You can claim an injunction to prevent further
infringement, and damages are not necessarily restricted to a reasonable
royalty.