Can You Infringe a Pending Utility Patent Application?

You cannot infringe a pending patent application. However, under specific circumstances, you can be liability for infringing published claims in a pending nonprovisional application, known as a pre-grant publication. Understanding these situation and what to do to mitigate liability is crucial to safeguarding your business and minimizing risk.

Understanding Pre-Grant Publication Liability

While a pending utility patent application does not confer enforceable patent rights, the situation changes once it is published as a pre-grant publication. Under 35 U.S.C. § 154(d), potential liability for reasonable royalties arises if:

1. The published claims are substantially identical to the claims in the issued patent.  Although most claims are amended during patent prosecution, some are not.  For these claims where only minor changes are made, you could be liable for patent infringement arises after the patent owner notifies (i.e., gives actual notice) you of pre-grant publication.
2. The accused infringer had actual notice of the pre-grant publication.  For example, actual notice occurs when the owner of the patent application sends you a letter advising you of the pre-grant publication.

This liability only applies from the publication date of pre-grant publication and does not retroactively cover your actions taken before that date.  Patent law imposes a duty to track the progress of the published pending patent application.  Otherwise, damages can be calculated from the date of the publication of the pre-grant publication.

Practical Steps to Limit Liability

If you want to protect your business from liability tied to pre-grant publications, here are key steps you can take:

1. Monitor the Progress of Relevant Applications

The best way to minimize liability is to keep a close eye on the progress of the pending applications that might affect your business. If the claims change substantially, then there is no liability for those published claims.  Here’s how to monitor the progress:

• Access the USPTO Patent Center to check the status of applications. Input the serial number of any relevant application to track its progress.  You will know the serial number because the patent owner has to send you the pre-grant application in order to ensure that you have actual notice of the pre-grant publication.  The serial number is an eight digit number with the following format: XX/XXX,XXX.  It will be located on the left hand side of the pre-grant publication.  You may have to sign up for a free USPTO account.
• Check whether the patent application has been abandoned. You might uncover the pre-grant publication but upon further inspection, you may find that the application has been abandoned.  If yes, then you don’t have liability since the application has been abandoned.
• Routinely monitor for updates, particularly for an office action indicating Allowable Subject Matter or a Notice of Allowance. This document signals that the application is close to issuance.
• Once the applicant pays the issue fee, the patent will typically be granted within six weeks.

Regular monitoring ensures you’re aware of developments as soon as possible so that you can take action to limit liability.

2. Evaluate Claim Scope in the Pre-Grant Publication

Understanding the published claims is critical to determining your risk. When reviewing a pre-grant publication:

• Focus on the scope and wording of the claims to see if they potentially overlap with your product or process.  If they don’t cover your product, then you probably don’t need to change anything.  If the claims cover your product, you may need to consider changing your product.  Review my articles on literal infringement and infringement under the doctrine of equivalents.
• Claims in the pre-grant publication define the potential coverage of their future patent.  Important Note: Be aware that liability arises only if these claims remain substantially unchanged when the patent is issued.  If there are any substantive changes, liability does not accrue until the patent is granted.
• If interpreting claim scope is challenging, consult a patent attorney to clarify potential risks.

3. Consider Product Design Changes

If it seems likely that a patent will issue and its claims will cover your product or process:

• Proactively explore design-arounds to avoid potential infringement.
• Address features directly covered by the claims, as small changes may be enough to avoid patent infringement.

4. Consider whether the invention is old and any patent invalidated?

Even if a competitor’s patent application leads to an issued patent, it does not mean the patent is valid. There are several strategies to challenge the validity of a patent, either before or after it is granted. Identifying vulnerabilities early can help you prepare for a potential dispute or avoid unnecessary business risks.

If the invention is old and you have the proof, a protest can be filed while the application is still pending.  The protest brings any prior art reference you have in front of the examiner.  This will decrease the likelihood that the inventor will be able to secure a patent or at least secure a patent with unamended claims.

What Are the Chances of Liability?

Although liability exists, it’s generally low. Here’s why:

• Many applications are abandoned and is never granted as a patent.
• Claims are often amended during prosecution to overcome examiner rejections. Liability arises only if the published claims and issued claims are substantially identical.
• Data shows that unamended claims have a lower allowance rate, but allowance of unamended claims is the exception rather than the rule.

Nonetheless, the risk is not zero. Businesses should take the possibility of liability seriously, especially for critical products or processes.

Conclusion

While you cannot infringe a pending utility patent application, the publication of pre-grant applications introduces a unique risk of liability. This liability depends on whether the claims are amended during prosecution, knowledge of the pre-grant publication, and the timing of your actions. The good news is that the risk is generally low, but staying vigilant is essential.

To protect your business:

• Monitor the progress of applications regularly.
• Use the USPTO Patent Center to track updates and anticipate issuance.
• Carefully review claim scope in pre-grant publications.
• Make product design changes if necessary to avoid potential liability.

By taking these steps, you can minimize your exposure and ensure that your business remains compliant with patent laws. For a deeper analysis or assistance in managing these risks, consult a patent attorney.