[Pct] When would you file an Article 19 Amendment?

[Dan Feigelson]

Carl, regarding the first reason: when the USA implemented publication of
patent application at somewhere around 18 months, it included a provision
in the statute (154(d)) for reasonable royalties back to the date of
publication if the infringed claims were what was published.

Have there been cases in which such reasonable royalties based on the 122
publication date were awarded?

Dan

On Tue, Jan 23, 2024 at 2:02 AM Carl Oppedahl via Pct <
pct at oppedahl-lists.com> wrote:

> This is discussed at some length in Lecture 8 at
> https://blog.oppedahl.com/the-2022-schwegman-advanced-pct-training/ .
>
> Reason 1 that I talked about in that lecture ...
>
> Suppose you want to collect pre-grant damages.  Well, the pre-grant
> damages are predicated on the content of your published claims.  To collect
> the pre-grant damages, among other things it has to work out that the
> conduct of the infringer is covered by the published claims.
>
> So now let's imagine you filed a PCT application.  And the ISR/WO shows up
> and you realize that the claims as filed are not the claims you will later
> be asserting against infringers.  Then an Article 19 amendment is the
> perfect way to arrange for publication of the claims that you will later be
> asserting against infringers.  And you will be able to collect your
> pre-grant damages based on the Article 19 claims.
>
>

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