Guest article

Preserving intellectual property before a patent is issued

By James F Ewing, PhD and Michel Morency, PhD

- Last updated on GMT

Related tags: Patent, Patent application

The nutraceuticals industry has a dynamic technology landscape
where a product life cycle may be abbreviated. Amid the constant
pressure to drive new products to market and the struggle to
establish and maintain market share, engaging in the expensive,
multiyear process of obtaining patent protection for your
technology may seem to be a questionable value proposition.

At first glance, traveling the long road to obtaining a patent may not seem to make sense where enforceable patent rights only accrue after issuance and there is risk that an invention may become obsolete before a patent issue.

Investment in solid intellectual property protection for key product brands and technology in the global marketplace, however, is the cornerstone to corporate sustainability.

Preserving a retroactive remedy against infringers before your US patent is granted under 'provisional patent rights' can be an effective strategy to maximizing the value of this investment.

Today, US law provides for publication of select patent applications 18 months from the earliest priority filing date of the application, as well as limited provisional patent rights to the holder of a published, pending US patent application.

The law also provides an applicant with mechanisms to accelerate or delay publication of US patent applications. Provisional patent rights allow for an award of retroactive damages - ie, reasonable royalty, to the holder of a published, pending patent application against a third party infringer.

Provisional patent rights serve to expand the timeframe in which a third party may be liable to a patentee for their infringing activity to include the period beginning on the date of publication of the application through to the date the patent is issued.

If the patent does not issue, however, the provisional rights disappear.

Under US law, an issued patent affords the patentee the ability to stop or enjoin others from making, using, selling, or importing into the US any technology that falls within the scope of the patent claims.

A pending patent application does not presently constrain the activity of others to practice the technology disclosed and claimed in the application. However, a patentee may establish the right to recover retroactive damages from a third party infringer, if they establish that:

A third parties' activities infringed on both a claim in the published application and a corresponding claim in the issued patent; the allegedly infringed claim is 'substantially identical' in both the published application and issued patent; and the applicant gave 'actual notice' to the third party as to what they regarded as their invention.

The patentee must also bring suit within six years of the date of the issue of the applicable patent.

Provisional patent rights give further incentive to individuals to protect their technology through patent. Patent applicants who are aware of allegedly infringing parties in the marketplace during the pendency of their published patent application can preserve their rights to retroactive remedy for infringing activities through timely actual notice.

The recognition of provisional patent rights and their proper enforcement can be an effective strategy for members of the nutraceutical industry to improve the value proposition of obtaining long term protection of key technology through patent.

James F Ewing is a senior counsel with Foley & Lardner LLP and a member of the firm's Biotechnology & Pharmaceutical Practice Group and the Life Sciences and Food Industry Teams. He can be reached at 617 342 4088 or by email​.

Michel Morency is a partner with Foley & Lardner LLP and a member of the firm's Biotechnology & Pharmaceutical and Private Equity & Venture Capital Practice Groups, as well as the Life Sciences, Emerging Technologies, Food and Nanotechnology Industry Teams. He can be reached at 617 342 4080 or by email​.

Related topics: Regulation

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