What are “provisional rights?”
Although legal rights (authority to initiate a lawsuit) related to a patent application do not arise until a patent is issued, a Patentee may in certain instances obtain damages (a reasonable royalty) for infringement:
“during the period beginning on the date of publication of the application for such patent under section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued.” (see 35 USC 154(d))
To qualify for provisional rights, a number of conditions must be satisfied, including: 1) the claimed invention of the issued patent must be substantially identical to the claimed invention of the published patent application; 2) the alleged infringer must have received actual notice of the published patent application; and 3) the action must be brought “not later than six years after the patent is issued.”
Although non-provisional utility patent applications are normally published automatically (pre-grant publication) at the United States Patent and Trademark Office (USPTO) 18 months after their earliest priority date, situations may arise where a Patent Applicant becomes aware of a competitor who is actively infringing upon their patent application which is unpublished. In such a scenario, the Applicant would want to file an early publication request with the USPTO to maximize the reasonable royalty award.
It should be noted that if the Applicant filed a non-publication request, they could rescind such a request (and request early publication thereafter). Further, in view of condition #1 above (substantial identity), if the claims of a patent application are amended during patent prosecution (or after filing), the Applicant may request republication of the patent application. (see 37 CFR 1.221 – Voluntary publication or republication of patent application publication)