Question 23
Domain 1: Patentability Requirements and Patent FundamentalsUnder 35 U.S.C. § 154(d), what are provisional rights?
Correct answer: B
Explanation
35 U.S.C. § 154(d) gives an applicant “provisional rights” to seek a “reasonable royalty” for certain pre-issuance infringement. Those rights apply only when the published application claims are “substantially identical” to the claims in the issued patent and the infringer had actual notice of the published application.
Why each option is right or wrong
A. The right to file a provisional application
B. The right to obtain reasonable royalty damages for infringement of published application claims that are substantially identical to granted patent claims
35 U.S.C. § 154(d)(1) creates a limited pre-issuance remedy: after publication of the application under 35 U.S.C. § 122(b), the applicant may recover a reasonable royalty for activities that would infringe the issued patent if the accused party had actual notice of the published application. Under § 154(d)(2), that recovery is available only for claims in the published application that are substantially identical to the claims in the patent as issued, and only for infringement occurring between publication and issuance.
C. The right to extend patent term for up to 5 years
D. The right to file in a foreign country