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

[Carl Oppedahl]

Oops sorry 2002.  And yes, in the 21 years that have passed, I have not 
learned of even a single instance of even a single instance of a patent 
owner getting a pregrant damages award.

On 1/22/2024 11:36 PM, Carl Oppedahl via Pct wrote:
>
> 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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