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.