Suing Patent Infringement Before Patent Grant: What You Need to Know

The question of whether one can sue for patent infringement before a patent is granted has often raised debates and queries. This article delves into the nuances of this legal issue, providing insights based on common practices in various jurisdictions. If you're faced with a potential patent infringement case before the patent is granted, understanding the legal landscape can help you make informed decisions.

Overview of Patent Infringement and Grant Processes

Patent infringement laws aim to protect inventors by preventing unauthorized use, manufacture, sale, or importation of their patented inventions. However, the process of obtaining a patent involves several stages. An invention undergoes a patent application, which can then be granted or rejected. Before the grant, the application is considered a patent pending and does not provide the full extent of legal protections.

Can You Sue for Patent Infringement While the Patent is Pending?

According to the consensus among legal experts, the answer is a definitive "no." You cannot initiate a lawsuit for patent infringement while the patent application is still pending. This limitation ensures that the Patent Office can thoroughly review the application to determine its validity, inventive step, and novelty.

However, there are scenarios where retroactive legal actions may be possible:

Retroactive Damages: In many countries, if a patent is granted and a third party was aware of the pending application and infringing activities, they can be subject to damages.

Notice of Infringement: Official or unofficial notification to infringers about the pending patent can sometimes allow for damages to be sought retroactively.

The Patent Grant and Infringement Proceedings

Once the patent is granted, the patent holder can commence infringement proceedings immediately. The legal system in various jurisdictions provides mechanisms for tackling infringement, such as temporary restraining orders and injunctions, providing full legal protections to the patent holder.

Legal Strategies and Due Diligence

While you can't sue for infringement during the pending phase, conducting due diligence is essential. This includes:

Patent Search: Thoroughly researching existing patents to identify prior art and ensure the novelty of your invention.

Patent Applications: Filing a detailed patent application with full disclosure of your invention to protect your rights fully.

Legal Expertise: Engaging a patent attorney to guide you through the entire process and ensure compliance with legal requirements.

Establishing infringement is a complex process, and seeking professional advice is crucial to navigate the intricacies of patent law effectively.

Additional Considerations and Local Variations

Legal practices can vary between jurisdictions. For example:

Publication and Early Publication: In some jurisdictions, the patent application undergoes a publication process 15 months post-filing, with the option for early publication.

Pre-Grant Opposition: You can oppose a patent before the grant in certain countries, such as under Section 25 of the Patents Act 1970 in India.

Retroactive Open for Public Inspection: Some jurisdictions allow for infringement damages to be sought from the date the application was "open for public inspection."

Hence, it's essential to understand the specific laws and regulations of your jurisdiction to tailor your strategy accordingly.

Conclusion

While you cannot sue for patent infringement while the patent is pending, engaging in a robust due diligence process and seeking professional advice can significantly bolster your position. Once the patent is granted, full legal protections become available. Understanding the nuances of patent law can help you make informed decisions and safeguard your intellectual property effectively.