Q: My patent was published last year Aug. Can I use the publication to drive away 3rd party sellers selling online?
Hi,
I have a utility patent published (not Granted yet) last year on Aug for a kitchen Item. However, many sellers are already selling this item across many platforms specially online (amazon, ebay etc..). Can I use my publication to drive away these sellers? Will online marketplace platforms support me in my claim or they only entertain Granted patents? If not, do I need to send all these sellers notices of my publication so they are liable for damages in the event that patent is granted?
Thanks!
A:
Under 35 USC Section 154(d), there is a rule that allows for provisional rights. This name is a bad choice as it has NOTHING to do with provisional patent applications but it applies in your situation.
Once a patent application has been published, you can send a letter to people that are infringing the claims that are listed in your published application but not yet granted. You typically include a copy of your published application and explain the concept of provisional rights -- that they are liable from the date of receipt of this letter until the patent is granted for infringing the published claims IF the published claims make it through the process in a substantially identical form. So if the claims are heavily revised during the patent examination process, you lose provisional rights (unless you republish your application with narrower claims).
This situation merits a discussion with a patent attorney as you may want to file a continuation now with claims narrowly tailored to the infringing products and perhaps pay for expedited examination.
One downside of sending a provisional rights warning letter is that it encourages the party receiving the letter to look for prior art and send that to the patent office to help the patent examiner reject or narrow your claims.
I hope this answer was helpful.
Kevin E Flynn
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