Legal Definitions - provisional right

A provisional right in patent law refers to a specific legal entitlement that a patent applicant can have even before their patent is officially granted. It allows the applicant to seek financial compensation, known as a "reasonable royalty," from another party who used their invention without permission during a critical interim period.

This period begins when the patent application is publicly published by the patent office and ends when the patent is actually issued. For this right to be enforceable, two main conditions must be met:

• The party using the invention without permission must have had actual notice, meaning they were aware of the published patent application.
• The invention as described and claimed in the final, issued patent must be substantially identical to the invention described and claimed in the earlier published application.

Here are some examples to illustrate how a provisional right might apply:

• Example 1: Software Algorithm

  Imagine a tech startup, CodeGenius, develops a revolutionary new algorithm for optimizing data transfer speeds. They file a patent application, which is subsequently published by the patent office, making the details of their invention publicly available. A larger competitor, DataFlow Solutions, sees the published application, understands the core innovation, and begins incorporating a very similar algorithm into their own commercial software products, knowing that CodeGenius is pursuing a patent. Several months later, CodeGenius's patent is officially granted, and the claims in the issued patent are nearly identical to those in the published application. CodeGenius can then assert a provisional right against DataFlow Solutions, demanding a reasonable royalty for DataFlow Solutions' unauthorized use of the algorithm during the period between the application's publication and the patent's issuance.

• Example 2: Medical Device

  BioMed Innovations invents a unique, non-invasive diagnostic tool for detecting early-stage diseases and publishes its patent application. HealthTech Corp. becomes aware of this published application and, recognizing the tool's market potential, begins manufacturing and selling a device that is substantially similar, hoping to gain market share before BioMed Innovations' patent is finalized. When BioMed Innovations' patent is eventually granted, covering the same core invention described in the published application, they can claim a provisional right. This allows them to seek a reasonable royalty from HealthTech Corp. for all sales made during the interim period, provided HealthTech Corp. had actual knowledge of the published application.

• Example 3: Sustainable Manufacturing Process

  EcoPack Solutions develops a novel, environmentally friendly manufacturing process for producing biodegradable packaging materials and publishes its patent application. A larger, established packaging company, Global Containers, learns about this published application and, seeing the growing consumer demand for sustainable products, implements a nearly identical process in their own factories. Global Containers was fully aware of EcoPack Solutions' published application. Once EcoPack Solutions' patent is issued, with claims that are substantially the same as those in the published application, EcoPack Solutions can exercise its provisional right. They can seek financial compensation from Global Containers for the unauthorized use of their patented process during the time between the application's publication and the patent's grant.