Can a patent infringement lawsuit be initiated with a pending patent application?
A patent infringement lawsuit CANNOT be initiated with a pending patent application. A patent infringement lawsuit (35 USC 271) may only be initiated once a patent grant is obtained. However, it should be noted that in some instances, a Patentee may qualify for “Provisional Rights” for infringement that occurs during specific periods that the patent application was pending (after publication but before issue).
Although a patent provides a right to exclude others, it does not provide protection if one is infringing the patent of another. Situations where the foregoing may arise is where one obtains an “improvement patent” on a product with the patent rights to the underlying product held by another entity.
Can a patent infringement lawsuit be initiated in an international jurisdiction with a patent issued by the USPTO?
As patent rights are geographical, a patent granted by the United States Patent and Trademark Office (USPTO) does not allow a Patentee to initiate a patent infringement lawsuit in an international jurisdiction.
A patent issued by the USPTO allows a Patentee to initiate a lawsuit against anyone who “makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor….” (35 USC 271). It should be noted that the term “United States” as used previously includes U.S. Territories and Possessions.
Does the USPTO enforce patents against alleged infringers?
The United States Patent and Trademark Office (USPTO) does not enforce patents against alleged infringers. The USPTO is tasked primarily with issuing patents and registering federal trademarks. However, once a patent has been granted, it is upon the Patentee or the Assignee to enforce the patent(s) against an alleged infringer(s). Accordingly, unless the Patentee takes affirmative steps (procures counsel to initiate an infringement proceeding in Federal District Court or before the United States International Trade Commission (ITC)) to enforce their legal rights against an alleged infringer, the alleged infringer will be able to practice the invention freely without legal recourse.