Effective ways to protect your intellectual property: leveraging international design applications to obtain provisional patent rights

Provisional patent rights allow a patent owner to seek damages for patent infringement for activities occurring between publication of a patent application and issuance of the patent. Design patent applicants can now take advantage of provisional rights by filing an international design application.

A patent owner is entitled to exclude others from making, using, selling, offering to sell, or importing a patented invention. 35 USC § 271. And that if someone infringes one of those rights, the patent owner is entitled to damages and may also be entitled to an injunction. 35 USC §§ 283; 284. A patent owner may also be entitled to damages for infringing activity that occurred before the patent was ever granted for violation of the patent owner’s “provisional rights.”

A non-provisional patent application typically publishes 18 months after the application filing date and vests the in the applicant certain “provisional rights” (not to be confused with a provisional patent application). After the patent issues, the patent owner may be entitled to damages for infringement of those provisional rights if the infringer had actual notice of the published patent application and if the invention claimed in the issued patent is “substantially identical” to the invention claimed in the published application. 35 USC § 154(d). Provisional rights have been available for non-provisional patent applicants since 1999 but have rarely been asserted, primarily because the claims in an issued patent are rarely the same as in the published application. And until recently, provisional rights were not available for design patent applicants because U.S. design applications do not publish until issuance. U.S. design applicants, however, can now obtain provisional rights by filing an International Design Application, or “Hague Design Application,” and designating the U.S. The application will publish within six months of filing, or upon request, can be published shortly after filing. And design applicants will be able to take advantage of provisional rights more easily than non-provisional patent applicants because the claim in a design application is typically identical to the claim in the issued patent.