Inventors and competitors often misunderstand patent pending. Inventors will mark their products with “Patent Pending” thinking that no one else can copy their invention. This understanding would be incorrect.
Competitors might see this and ignore the patent pending notice. This ignorance would be foolish.
Patent pending notice is something you’ll come across in time, so it helps to know the meaning. Curious about the ins and outs of patent pending? I did extensive research to provide you the answer.
So, what does patent pending mean? Patent pending means that an inventor has filed a patent application on the invention with the USPTO. The USPTO has not necessarily patented the invention yet. A benefit of patent pending is that it establishes a priority date. Also, provisional patent rights is granted to the inventor after publication.
If you want to learn more about patent pending and how it may affect your creations, keep reading. In this article, I will explain its meaning, the benefits to inventors, and any potential liability to competitors. Let’s dive in.
1. Definition of patent pending
In simplistic terms, patent pending means that a patent application (provisional or nonprovisional patent application) for an invention has been filed with the United States Patent and Trademark Office (USPTO). The invention is now patent pending. People also used to say “patent applied for.”
Patent pending does not mean the Patent Office has granted the patent. I do want to reiterate that because many people are confused about this point.
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!
There is a twist. The invention can be patent pending after the patent has granted or the patent application abandoned.
How can the invention still be patent pending? You can resubmit the same patent application before the abandonment of the patent application or grant of the patent. The resubmitted application would claim priority back to the first patent application.
Why does this happen? It’s because there is still a patent application on the invention pending with the USPTO. Patent pending status can last up to 21 years.
How can you keep an invention pending for 21 years? You can file a provisional patent application to establish patent pending status. The provisional patent application remains pending for one year. Right before the one-year time period is up, you could file continuing patent applications one right after another before the prior application is abandoned or granted for the next 20 years. The invention in this scenario would remain pending for 21 years.
The next big question is why would you want to keep an invention pending for 21 years? This link Broadening Patent Protection explains at least two very good reasons for maintaining 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 means that a patent application is pending before the USPTO.
Now, let’s say that a competitor gets a hold of a product and inspects it and its packaging for any patent markings. The marking on the product indicates it is patent pending.
Sometimes, the inventor does not mark their product with a patent number. Most likely, in this instance, the product isn’t patented. Why? Because the patent owner would have most likely marked the product with the patent number if it was. Unfortunately, like the rest of life, nothing is 100 percent. Some inventors don’t label their product with the patent number for one reason or another. To find out if a patent pending product is patented, you must conduct a patent search. However, even after a search, one can’t be entirely sure that no patent exists on the product.
2. What are the advantages of patent pending?
Benefit #1: Establishes a priority date
The primary benefit of patent pending status is that it establishes a priority date for the inventor.
When you submit a patent application, you are claiming yourself as the inventor as of the filing date. Anyone that files a patent application after your filing date will not be able to receive a patent on the same invention, as you were first in line. If there is a patent to be had, you will get it. You have priority to the patent, should one issue. The US follows the first-inventor-to-file rule and you being the first-to-file have won the race to the patent office. This scenario illustrates why it is crucial to secure a pending status as soon as possible.
There are a couple of scenarios where filing as fast as possible might be especially important. For example, some inventors tell others about their invention before filing a patent application. They do this for one reason or another, but in my conversations with inventors, it is to gauge market demand. The other person may like the idea and give off hints they might file their patent application.
In this instance, it is essential to try to file as soon as possible since the party that wins the race to file a patent application will get the patent. You might lose the race and the rights to the patent. Now, you can sue the other person who stole your invention, but litigation is costly and unpredictable. My experience with clients is that they will most likely never sue anyone under these circumstances because of those two factors.
Another example is one where the inventor might be inventing in a fast-moving area of technology, such as software or cryptocurrency. In this regard, it might be beneficial to file sooner than later.
Benefit #2: Inventors can begin marketing the invention
After filing the patent application and establishing patent pending status, you can safely market the invention. Now the inventor can publish a website, demonstrate the invention to others, and offer the invention for sale. If anyone tried to file a patent application based on the inventor’s marketing efforts, then the inventor is still safe. Why? The inventor has already filed a patent application that has priority over any later filed patent application.
Patent pending status allows the inventor to mark the invention as patent pending, as mentioned.
Also, the inventor can market the invention as patent pending. 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, his company would be the sole supplier of this feature.
Benefit #3: Warning to competitors
Patent marking also sends a warning to competitors. If they copy your product, they may be stopped in the future when you do get your patent.
Find out how to mark your product as patent pending. I wrote an extensive article on patent marking.
Benefit #4: Inventor can license and sell the patent application
Patent pending technology can be licensed or sold. Even if the technology isn’t patented or licensed, the patent application provides a benefit to the licensee or buyer because it establishes priority. The buyer of the patent application may want the priority that the patent application gives. Also, the licensee might prefer doing business with the person with the earliest priority.
Bear in mind that licensing or selling patent pending technology is not very often done, but it is possible.
Benefit #5: Creates prior art
When you file your patent application, it becomes prior art against your competitor’s patent application. It is prior art against any patent application filed after your filing date.
Caveat: A patent application is not enforceable
Just because you have patent pending status doesn’t mean you can get sue happy. If the inventor sees someone who has copied their product, then the inventor can send a stern warning that the inventor has submitted a patent application. However, think of the warning as just a notification. These letters often go ignored. The potential infringer has no way of verifying the inventor’s claims. Plus, they have no way to predict the probability of you getting a patent.
Patent attorneys also don’t help the situation because of how they use the phrase. They might congratulate a client by stating that they have patent protection when all that they have is patent pending status. Patent protection is too broad of a term. For this reason, I make a distinction between patent pending-type patent protection and enforceable patent protection.
Patent pending-type patent protection gives priority while patent pending status in this sense holds the inventor’s place in line as of the filing date of the patent application.
3. Are competitors liable for patent pending infringement?
Competitors are not liable for patent infringement if the application is merely pending. Liability exists when the Patent Office grants the patent.
However, competitors can, in the future be liable for patent infringement of a pending patent application. Specific stringent requirements must be met.
In particular, a competitor is liable for patent infringement under 35 U.S.C. Section 154(d) 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.
Patent pending status does not give inventors the ability to sue others now for patent infringement as we discussed in the last section. Thus, so long as the patent application is only in the patent pending phase, the inventor cannot tell copiers to stop copying the product. However, they have provisional patent rights which can be enforced later on after the patent grant by satisfying the four requirements above.
Let me explain.
U.S. patent laws give inventors provisional patent rights under 35 U.S.C. Section 154(d). When the inventor submits a patent application, patent the invention achieves pending status. Provisional patent rights are given to inventors when the patent application is published under the pre-grant publication rules. Pre-grant publication typically occurs 18 months after the filing date of the patent application.
The patent rights are provisional because the patent application has not yet matured into a patent. While the patent application is merely pending, the inventor can’t sue competitors on the published patent application. The inventor has to wait until the patent is granted. Now, if the claims in the patent are identical or substantially the same as the claims in the pre-grant publication, then anyone infringing on the patent claims is liable for damages. They are liable for sales before and after the grant. Liability extends back to the publication date of the pre-grant publication.
One more element must also exist. The competitor or alleged infringer must have had actual notice of the published patent application. In other words, once the pre-grant application is published, you have to send it to the alleged infringer to show that they had actual knowledge of the pre-grant publication.
If an inventor wants to maximize this potential liability, then they may request early publication instead of waiting for 18-months before their patent application is published.
However, I don’t want to blow this potential liability out of proportion. Pre-issuance damages are a risk to competitors. However, as of yet, I’ve not seen any actual litigation on this issue. A reason for such failure is that patent claims typically change during prosecution. What this means is, the claims in the patent are generally not the same as those in the pre-grant publication. Nevertheless, in my practice, many patent applications have matured into patents without any significant changes to the claims. Hence, the liability is real, and competitors should account for this liability in your business.
Moreover, the inventor has to send out a notice letting them know about the pre-grant publication. If you haven’t received such a notice, you are most likely not infringing on the inventor’s provisional patent rights under 35 USC 154(d).
4. Does patent pending protect you?
Patent pending protection is the most confusing aspect of patent pending status. How does patent pending protect you? Just because you filed a patent application does not mean your entire product is patent pending. You are only patent pending for what is included or described in your patent application. Many misunderstand this nuance. This misunderstanding is one of the reasons I’m against filing a cheap patent application. A patent attorney doesn’t have enough time to prepare a patent application for such a cheap price properly.
Patent pending status is achieved only for what is explained in the patent application, nothing else. Let me be clear. If the patent application does not describe a feature of the invention, then that feature is not pending. The product can still be considered pending, but the feature isn’t pending.
For example, a provisional patent application can explain that a mechanical pencil advances a lead rod with the press of a button. This feature is patent pending. However, if the patent application does not explain how the mechanism works, then the mechanism is not pending. If the mechanism is the crux of the invention, then the mechanism is not pending. If the patent application does not include a crucial feature of the invention, then the feature is not pending. The filing of the patent application has failed to achieve patent pending status for that feature.
Don’t gloss over the prior paragraph. Many people do not understand the ramifications of not including all the features in excruciating detail in a patent application. When inventors file their own patent application and come to seek my advice, later on, I ask them to show me the crucial feature in the patent application. They often fail to do so. Once you submit the patent application to the Patent Office, you cannot make any more modifications to the patent application. You cannot add any missing feature later. You can certainly file a new patent application showing the new feature works. However, such new feature is patent pending as of the filing date of the new patent application.
5. Does filing a provisional or nonprovisional patent application establish patent pendency?
Yes, filing a provisional or nonprovisional patent application establishes patent pendency. It is one of the first steps of the patent process for obtaining a patent.
The patent process starts with an invention. The inventor has to come up with the idea or solution to a problem and submit a patent application. The patent application must describe the invention so that someone can make and use the invention. The inventor submits the patent application with the USPTO as a provisional or nonprovisional patent application.
For provisional patent applications, the application is pending for one year. After that, to continue maintaining patent pendency, a nonprovisional patent application has to be filed which claims priority back to the provisional patent application. Otherwise, pending status is lost. Provisional patent applications are abandoned after a year.
You could also refile your provisional patent application to reestablish patent pending status. However, by doing so, the priority date is now the filing date of the re-filed provisional patent application. If the invention was disclosed more than one year ago, then you cannot refile the provisional patent application. Why? Because the filing date of the new provisional patent application would be more than a year from the date of first publication. The US does not allow someone to get a patent for an invention that they put out into the public domain for more than one year.
6. What are the costs to get patent pending status?
The governmental filing fee to secure patent pending status is between $65 to $240 as of 2019 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 yo/cost-effective-patent/u want to prepare the patent application yourself, then here are some resources you might consider:
7. How to search whether an invention is patent pending?
To search whether an invention is pending, you have to have some facts about the invention first. Just knowing about the product is typically not enough to locate the patent application on the invention. You’ll have to search the Patent Office’s database using these facts as a search criterion.
The search criterion that I like to search for is the inventor’s full name or company name that manufactures or sells the product. If the inventor’s name is common or the company name is generic, you can still locate the patent application. You need to use additional search filters.
Here is how I do it. You use the information that you have and also search by the subject matter of the invention. For example, searching for a patent application on a new software application from a company with a generic name might be difficult because there will be a large search result. You might come up with thousands of hits. However, if you were to search for the type of game, then you will probably see fewer hits. Adding more search filters reduces the hit list to a manageable number. The more facts you can search for to find the patent, the better the chances you will be able to find the patent application if it is open to the public.
You can use the Patent Office’s database to run the search. The Patent Office’s database is the most up to date database. However, you might also consider a more natural and more intuitive design by using the search engine at Free Patents Online. The database at the USPTO office will be current as wellas they update their databases every Tuesday night. However, since the USPTO does not pre-release its data to the other data aggregators, the other data aggregators such as Free Patents Online are about a week behind.
Not all patent applications are open to the public. As stated above, nonprovisional patent applications are published 18 months after the filing date. Hence, for the first 18 months after filing, they are held in secrecy. No one but the Patent Office and the inventor can see the patent application. Moreover, provisional patent applications are never published. They become available after the corresponding nonprovisional patent application is filed and published.
Patent applications can be published earlier than 18 months by filing a request for early publication. The inventor can request early publication of its patent to get provisional patent rights for his or her invention.
Moreover, some nonprovisional patent applications are never published until they mature into a patent. These patent applications were not published because the inventor requested the nonpublication of their patent. No one can find these patent applications.
8. How do you mark a product as patent pending?
US patent laws allow the inventor to mark their products as patent pending if the inventor files a provisional or nonprovisional patent application with the Patent Office. See 35 USC § 292.
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
- Any word(s) explaining that an application for a patent has been made.
For example, you could label your product with the patent number along with a patent pending notice – Pat. 10,123,456 and patents pending. This scenario occurs when you get a patent and file a continuation patent application.
The other types of intellectual property (trademarks, copyrights, and trade secrets) have their own marking system. For example, circle c © is for copyright notice. TM or the circle r ® is for trademarks. Trade secrets are marked “Confidential” or with any other marks that indicate the confidential nature of the information. These symbols have nothing to do with patents. Don’t use these other markings for a patent pending or patented product. Otherwise, others will not respect your rights because you will appear unsophisticated.
If you do mark your product as patent pending, then it gives informal notice to others that your invention is patent pending. Be aware that it does not grant you provisional patent rights. For more information on patent marking, see Patent marking article. As discussed above, patent pending status gives you provisional patent rights when the patent application is published under the pre-grant publication rules.
However, to take advantage of the provisional patent rights, the potential infringer has to have “actual notice” of the pre-grant publication. Constructive notice is insufficient to give proper notice of the published patent application under 35 USC 154(d)(1)(B).
If you mark the product as patent pending, don’t use the serial number of the patent application. The reason is that there is absolutely no benefit that I can see in using the serial number. All that is required is the magic words patent pending. Moreover, if you inadvertently mark the serial number of the patent application on the product, then others can now “protest” the patent application to discourage the examiner from granting the patent.A protest is a document filed by a third party that provides the reasons that a patent should not mature on the patent application.
Although US patent laws allow for the marking of a product with a patent pending notice, the inventor opens themselves up to liability if the product is not patent pending. For example, if you did not file a patent application, then you may be liable for false patent marking. Also, if the patent application does not describe the invention, then you may be responsible for false patent marking. False patent marking carries a fine of up to $500 per item.
9. 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. More than 150 countries throughout the world have signed the PCT. It works in the following way: if an inventor files a PCT application, the inventor can submit the same application in any of the PCT member countries at a later date. Any country having any significant economy is a part of the PCT except for Taiwan and a few South American countries. Hence, the PCT application is an important part of securing worldwide patent pendency.
Technically speaking, filing a PCT application does not give anyone patent pendency in any of the PCT member countries. You have to submit a national phase patent application in each of those countries. Nevertheless, the PCT application is a powerful tool because the inventor can reserve the right to file the national phase patent application at a later date in so many different countries.
The typical route to the PCT is normally done by filing a provisional or nonprovisional patent application here in the United States first. Within one year of the first filed patent application, the inventor has to file the PCT application. After filing the PCT application, the inventor then has another 18 months for a total of 30 months from the filing date of the first filed patent application to file a national stage patent application off of the PCT application.