navigating the patent maze

Almost as often as I encounter the misperception that having a patent means "guaranteed" income, I encounter the misperception that a patent application has no value - can’t be licensed - and, to add insult to injury, when it is published the whole world knows what you are doing.  Moreover, you have no recourse to stop the wanton use of your invention. 

While I have explained that applications do indeed have value, I have acknowledged that very little, if any, recourse is available against the "infringer" and even then, royalties are not available until and unless the patent is granted with claims substantially similar to those published and the infringer has actual notice of the publication.  (See USC 35 154(d).)  Until now.  Just yesterday, the Federal Circuit appeals court in the U.S. has approved of sending a warning letter before a patent issues, warning of possible infringement of claims in a pending, published patent application. 

Stephens v Tech Intern (04-1215)

In particular, Stephens did not commit misconduct by sending a notice of potential infringement - the notice represented adherence to the requirement for the future infringer to receive actual notice in order for the patent owner to recover royalties in the future.  Later amendment of the claims in the patent application did not trigger the need for withdrawal of the notice because Stephens believed that Tech still infringed.