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

[Carl Oppedahl]

Yes this happened in 2012.  In the thirteen years that the law has 
permitted such pregrant damages in the US, I have not learned of even a 
single instance of a patent owner getting a pregrant damages award.

To collect such damages, the US law says the patent owner needs to have 
/*given notice*/ to the infringer during the pregrant time period.  I 
have to imagine that if such notice were given, the first thing the 
infringer would do is get busy doing a design-around.

On 1/22/2024 11:28 PM, Dan Feigelson wrote:
> 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/
>     <https://gcfagjf.r.af.d.sendibt2.com/tr/cl/MOqKCk3o9zRbuCZi_IevvHnEprlipZEyARcmFHLY0DgRxxPzh2HxJpDND89mFhvUzl32hNwV75wNJAmVW3Bt06KOYbLXajehmDyLvqNqCqKAVtmW3kgmabCfBGdxW9IaulyfOh7UfEFvyS8c8_0zZEQtfj3AdyGVtbvncjyRQNApkCocJdxbyyEj5N-QSjyxYHW72oWCRHd2NGoQNI8bCln0O-nSKiewXCpKejBhytSb22arBtQn0ytdzYoXUDlNmmKtwveiRe08UW2NeII3L09ZMKEWi_BA05UGDeNbsZVRm_mJQXzg6OjMogzH-T4p>
>     .
>
>     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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