Updated: December 28, 2021
Inventors and competitors often misunderstand the significance of patent pending. Inventors will mark their products with “Patent Pending” thinking that no one else can copy their invention. Their understanding would be incorrect.
Competitors might see patent pending marked on a product and think that this means the product is already patented. Once again, this understanding of patent pending is incorrect. As such, the competition may ignore the patent pending notice (i.e., patent marking), but that would not be recommended. Read more about what patent owners and competitors ought to do.
A product marked with “Patent Pending” is something you’ll come across in time, so it helps to know its meaning. Curious about the ins and outs of patent pending? I’m a patent attorney and will explain everything that you might want to know below.
So, what does patent pending mean? Patent pending means that an application for a patent has been filed with the USPTO. The inventor is providing constructive notice that if others copy the patent pending product, they will be liable for patent infringement when the patent is granted.
In this article, I will explain what patent pending means, its benefits, and any potential liability to competitors.
Let’s dive in.
1. What does patent pending mean?
Patent pending means that a patent application for an invention has been filed with the United States Patent and Trademark Office (USPTO). Inventors can say that their invention is patent pending once the patent application is filed with the USPTO. Other ways to indicate patent pending are “patent applied for,” “Pat. Pend.,” and “Pat. Pending.”
Patent pending does not mean the Patent Office has granted the patent. However, the patent can be granted later so the competition should not ignore the patent pending warning.
The invention is pending for as long as the patent application is pending with the USPTO. When the inventor abandons the patent application, the invention is no longer pending. Also, if the patent application has matured into a patent, then the invention is again not pending. Instead, the invention is now patented. Congratulations!
The invention can still be patent pending after the patent has been granted or the patent application has been abandoned.
To maintain patent pending status, the patent owner must resubmit the same application for the patent before the abandonment of the patent application or grant of the patent. The resubmitted application would have claim priority back to the first patent application.
These follow-on applications are called continuing applications (i.e., continuation, divisional or continuation-in-part applications). Because of these continuing applications, an invention could remain patent pending with the USPTO for up to 21 years.
Why would you want to keep an invention pending for 21 years? This link Broadening Patent Protection explains at least two good reasons for maintaining the pendency of the invention.
The bottom line is that patent pending status does not tell you if the patent application has matured into a patent or if the product is patented. Patent pending merely means that a patent application is pending before the USPTO.
2. How long do patent applications stay patent pending on average?
The average length of time that a patent application remains patent pending has been decreasing over the past few years. This means that the patent office is more efficient over time in granting the patent or making a final rejection of the patent application. Based on this data, patent applications are approved or granted about 23.3 months after the filing date of the nonprovisional patent application.
3. What are the benefits of patent pending?
Benefit #1: You have priority over other later filed patent applications.
The primary benefit of patent pending status is that it establishes a priority date for the inventor.
When you submit a patent application, you establish a date of conception of the invention as of the filing date of the patent application. No one can steal your invention away from you. Anyone that files a patent application after you will be rejected by the patent office. You have priority over the later-filed application.
The US follows the first-inventor-to-file rule. You were the first to file and the first to win the race to the patent office. As such, it is important to secure patent pending status as soon as possible.
Benefit #2: You can start to market your invention or product.
So what if you have priority?
By having priority, you can now safely market your invention to others. You can start to sell your patent pending product. You can approach potential licensees.
You don’t have to worry that they file for and get a patent on your invention. Your patent application has priority over their application should they try to file their own application after hearing about your invention from you.
Benefit #3: You are warning competitors of potential patent infringement liability.
The patent pending status allows the inventor to mark the invention as patent pending.
Inventors mark their products with patent pending to send a warning to competitors. If the competition copies the patent pending product, they may be stopped in the future when the patent is granted.
When Steve Jobs launched the iPhone, he hinted at the patent to pinch technology. See his pitch here in this video.
In this regard, he was implying that because the pinch technology was patented. In the future, his company would be the sole supplier of this feature.
Find out how to mark your product as patent pending. Here is my extensive article on patent marking.
Benefit #4: Your patent pending technology can be licensed and sold.
Patent pending technology can be licensed or sold even though it is patented. The patent application is an asset of the company. Patent pendency provides a benefit to the licensee or buyer because it establishes an earlier priority date. The buyer of the patent application may want the priority that the patent application gives.
Bear in mind that licensing or selling patent pending technology is not very often done, but it is possible. Read my article on “Can you sell your idea without a patent?“
4. Are competitors liable for patent pending infringement?
Infringement of a patent application cannot exist because a patent application does not give the inventor the right to exclude others. Competitors are liable for patent infringement only after the patent application is granted as a patent.
Although infringers are not liable for patent infringement while the patent application is pending, competitors can be liable for patent infringement during patent pendency if the patent application is granted as a patent under 35 U.S.C. Section 154(d).
The patent owner can calculate damages from a date before the patent was granted. However, specific stringent requirements must be met.
Under 35 U.S.C. Section 154(d), a competitor is liable for patent infringement if the following requirements are satisfied:
- Requirement #1: the patent application must have been published under the pre-grant publication rules.
- Requirement #2: the patent has been granted.
- Requirement #3: the claims in the patent are similar or identical to the claims in the pre-grant publication.
- Requirement #4: the competitor has received actual notice of the pre-grant publication.
Let me explain how to take advantage of this statute.
For requirement #1, you should request early publication of the patent application. You can do this by checking the Request Early Publication on the Application Data Sheet.
For requirement #2, you cannot allow your patent application to go abandoned. You need to aggressively but politely argue the merits of your invention to the examiner.
For requirement #3, do not amend the application during the examination. You may want to include a narrow claim which covers your product to increase the likelihood of successfully getting a patent. The strategy is to present a claim that could be allowed and be identical to the claims in the pre-grant publication.
For requirement #4, send out a notification letter to the competitor copying your product.
5. How does patent pending protect you?
The primary patent protection that patent pending status on your invention gives you is a priority over later filed patent applications. This allows you to start marketing your invention to the public without fear that they can steal your idea away from you. If someone claims that they invented the invention before you, you can prove that you invented first by showing the filing date of your patent application.
6. How do you get patent pending status for your invention?
You can establish patent pending status for your invention by filing a provisional patent application or nonprovisional patent application. As such, you can get patent pending for your invention easily. You can file the patent application yourself at the United States Patent and Trademark Office. You can also hire a patent attorney.
7. What does it cost to get patent pending status?
The minimum government filing fee to secure patent pending status is between $65 to $240 as of 2021 data. If you retain a patent attorney, then the attorney fees to help prepare and file the patent application will run you about $7k to $15k depending on the subject matter, technical difficulties of the invention, and other factors.
If you want to prepare the patent application yourself, then here are some resources you might consider:
8. How to find the patent application for a product that is marked patent pending?
If you have a product you want to copy but the product is marked patent pending, you can find the corresponding patent application.
You need to know the name of the owner first.
Find the name of the owner of the mark by searching for the product on the internet. Most companies don’t hide the fact that they produce a product.
The Patent Office’s database is the most up-to-date database. However, a more natural and intuitive patent search engine is Free Patents Online.
Look up the name of the company by conducting an Expert Search. Type in “AN/Name of Owner” into the search bar.
Be aware that not all applications are available to the public. Most applications are held in secrecy for 18 months after filing. So, if you didn’t find anything, that doesn’t mean that there is no corresponding application. I know this is not what you want to hear but it is just the way the patent system works.
9. How do you mark your product as patent pending?
You can mark your product as patent pending as soon as you file the provisional or nonprovisional patent application under 35 USC § 292. The trademark symbol is TM or Circle R ®. The symbol for copyrights is a Circle C or ©. Patents don’t have a symbol but you can print the patent number or the words Patent Pending or Pat. Pend. to signify ownership of the invention.
Read my extension article on What are the patent marking requirements?
To mark the product as patent pending, you can label the product or packaging as:
- Patent Pending
- Patent applied for
Don’t mark the product with the serial number of the patent application. If you do, your competitors can file a protest against your patent application. A protest is a document filed by a third party that provides the reasons that a patent should not mature on the patent application.
10. Are you liable if you mark your patent but did not file a patent application?
You will be liable for false patent marking if you mark your product as patent pending but did not file a corresponding patent application. The potential damages are $500 per product that you falsely marked as patent pending.
11. How do you get worldwide patent pending status?
A worldwide patent pending does not exist. However, the closest analog to a worldwide patent pending is a Patent Cooperation Treaty application, also known as a PCT application. Read more about the pros and cons of worldwide patent protection. More than 150 countries throughout the world have signed onto the PCT. If you file a PCT application, you reserve the right to file a patent application within certain time periods.
I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.