United Kingdom: Theory Into Action: Calculating Damages Payments and Accounts of Profits in Patent Instances

A provisional patent application is not a patent, and furthermore, never becomes a patent, with the single rare exception noted below.

While patent attorneys often speak of "converting" a provisional into a non-provisional, this is not usually an accurate description of the case (with a single exception), since the provisional has no life beyond its twelve-month term and "converting" is usually done by filing a non-provisional application that claims benefit of the filing date of the provisional. Thus, the provisional is primarily a means for delaying the filing of a non-provisional patent application, while still getting benefit of the earlier filing date of the provisional.

Lastly, a provisional patent application never sees the light of day and remains confidential, unless a non-provisional patent application (or a Patent Cooperation Treaty application -- to preserve foreign filing rights -- or a design application) takes priority to it.

For more information on provisional patent applications, see .

Non-provisional

A non-provisional patent application, sometimes called a "regular" patent application or just a "patent application", is a "real" application for a patent. Claims are the invention.

There are various types of non-provisional patent applications, including the "parent" application and such "children" as divisional patent applications (occasionally the United States Patent ; Trademark Office (USPTO) examiner requires restriction between more than one invention in the patent application; after proceeding with one selected invention, the other or others can be filed as divisionals), continuation patent applications (typically only a new set of claims to the original invention) and continuation-in-part patent applications (the original patent application plus some new matter added -- this is the only way to add new matter to a patent application).

For more information on non-provisional patent applications, see .

Many people think that a provisional patent application is less costly way to get a patent than a non-provisional patent application.

Again, because the provisional expires and a non-provisional must be filed to take priority to the provisional, this two-step process is more expensive.

There are at least two good reasons to file a provisional patent application:

Alternately, if they do not find someone, they plan to let the provisional patent application expire without filing a non-provisional patent application and incur no further expenses.

Namely, if you want to get a patent and reason 1 above doesn't apply, you should immediately file a non-provisional patent application and get the process going.

Provisional or Non-provisional Patent Application - Which Should You Choose?

DamagesAn award of damages focuses on the losses sustained by the claimant. An Account of ProfitsOn the other hand an account of profits focuses on the profits made by the defendant, without reference to the damage suffered by the claimant at the hands of the defendant. The claimant is treated as if they were conducting the business of the defendant, and made the profits of the defendant. In most cases, an award of will equal or exceed the maximum award in an account of profits; however an account of profits may greatly outstrip an award of damages in the right case. There are two ways to calculate the damages suffered by a defendant, and the method turns on whether the claimant manufactures the patented invention or whether manufacturing of the invention is licensed to others.The Reasonable RoyaltyWhere the patent owner licenses the production or use of the invention to others, the measure of damages is the lost royalty profits. 4. Lost profits on sales lost on goods that are commonly sold with the invention 5. Springboard Damages: damages that are suffered after the infringement by establishing a market presence through infringement and early entry into the market.