Patent pending is often misunderstood by inventors and competitors. Inventors will mark their products with “Patent Pending” thinking that no one else can copy their invention. This would be incorrect.
Competitors might see this and ignore the patent pending notice. This 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 a patent application on an invention has been filed with the USPTO. It does not mean that the invention has necessarily been patented. A benefit of patent pending is that it establishes a priority date. Also, provisional patent rights, which may be asserted against competitors, 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 of patent pending to competitors. Let’s dive in.
- 1. Definition of patent pending
- 2. What are the advantages of patent pending?
- 3. Are competitors liable for patent pending infringement?
- 4. Does patent pending protect you?
- 5. Does filing a provisional or nonprovsional patent application establish patent pendency?
- 6. What are the costs to get patent pending status?
- 7. How to search whether an invention is patent pending
- 8. How do you mark a product as patent pending?
- 9. How do you get worldwide patent pending status?
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 theUnited States Patent and Trademark Office (USPTO). The invention is now patent pending.
Patent pending does not mean the invention has been patented. I do want to reiterate that because many people are confused about this point.
The invention is patent pending for as long as the patent application is pending with the USPTO. If the patent application is abandoned, then the invention is no longer patent pending. Also, if the patent application has matured into a patent, then the invention is again not patent pending. Instead, the invention is now patented. Congratulations!
There is a twist. Even if the patent application has been abandoned or has already matured into a granted patent, the invention can still be patent pending in some instances.
How can the invention still be patent pending? If before the abandonment or grant of the patent, a continuing patent application (i.e., continuation, divisional or continuation-in-part) is filed and claims priority back to the parent patent application, then the invention is patent pending.
Why does this happen? It’s because there is still a patent application on the invention pending with the USPTO. In fact, patent pending status can last up to 21 years.
How can you keep an invention patent 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 patent pending for 21 years.
The next big question is why would you want to keep an invention patent pending for 21 years? This link Broadening Patent Protection explains at least two very good reasons for maintaining patent pending 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 just 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, no patent number is displayed on the product. 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 mark their product with the patent number for one reason or another. To find out if a patent pending product is patented, a patent search would have to be conducted. However, even after a search, one can’t be completely sure that no patent exists on the product.
2. What are the advantages of patent pending?
Benefit #1: Patent pending establishes priority date
The primary benefit of patent pending status is that it establishes a priority date for the inventor.
On the date that the patent application was filed, a stake in the ground is placed claiming you as the creator of the invention 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. This is what is meant by priority. You have priority to the patent, should one issue. The US follows a first inventor to file rule and you being the first to file has won the race to the patent office. This is why it is important to secure patent 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 really like the idea and give off hints they might file their own patent application.
In this instance, it is important to try to file as soon as possible since the party that wins the race to file a patent application will be granted the patent. You might lose the race and the rights to the patent. Now, it is true that 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 creator 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: Patent pending allows inventor to market 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’s own patent application will have priority over the later-filed patent application.
Patent pending status allows the inventor to mark the invention as patent pending, as mentioned.
An invention or product that is patent pending can be marketed as patent pending as well. 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: Patent pending markings warns competitors
By marking your product as patent pending, you are also sending a warning to your competitors that, should they decide to copy your product, they may be stopped in the future when you do get your patent.
I wrote an extensive article on patent marking. Find out how to mark your product with patent pending.
Benefit #4: Patent pending enables licensing and business sales
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.
Caveat: Patent pending is not an enforceable patent
Just because you have a 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 patent pending status. However, think of the warning as just a notification. Because the potential infringer has no way of verifying the inventor’s claims and no way of predicting probability of a patent maturing from the patent application, oftentimes, these types of letters go ignored.
Patent attorneys also don’t help the situation because of how they themselves 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 can in the future be liable for patent infringement even if the product is only patent pending. However, certain requirements must be met first.
In particular, a competitor is liable for patent infringement under 35 U.S.C. Section 154(d) if the following requirements are met:
- Requirement #1: the patent application is 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 patent pending 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 a patent application is filed, patent pending status is achieved. However, provisional patent rights are not granted to the inventor at this time. Instead provisional patent rights are given to inventors when the patent application is published under the pre-grant publication rules. This 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 till 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 not only for sales after the grant, but also before the grant of the patent. Liability exists as of 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 the 18-month period 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 where the patent owner was able to get a damage award for activities of the infringer before the patent was granted. A major reason for the failure to get pre-issuance damages 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 own practice, there are many patent applications that 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?
This is the most confusing aspect of patent pending status. What is actually patent pending? Just because you filed a patent application does not mean your entire invention is patent pending. You are only patent pending for what is included or described in your patent application. This is one of the reasons I’m against filing a cheap patent application. The patent attorney just doesn’t have enough time to identify the point of novelty and develop it or broaden it up to provide sufficient or expansive disclosure to properly protect the invention.
Patent pending status is achieved only for what is explained in the patent application,nothing else. Let me be absolutely clear. If an aspect or feature of the invention is not explained in the patent application, then that aspect or feature is not patent pending even though the device or product might be considered to be patent pending.
For example, if a provisional patent application explained that a mechanical pencil can advance a lead rod with the press of a button but does not show how the mechanism works, then the invention is patent pending, but not the mechanism. If the mechanism is the crux of the invention, then the mechanism is not patent pending even though the overall mechanical pencil is patent pending. If a crucial feature of the invention that makes the product work is not described in detail, then the crucial feature is not patent 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 the patent application is filed, you cannot make any more modifications to the patent application. Any missing feature cannot later be added. You can certainly file a new patent application showing how the feature works but such feature will be patent pending as of the filing of the new patent application.
5. Does filing a provisional or nonprovsional patent application establish patent pendency?
Yes, filing a provisional or nonprovisional patent application establishes patent pendency. Oftentimes, patent pending refers to the filing of a provisional patent application. However, patent pending status can also be achieved by filing a nonprovisional patent application.
The patent pending process starts with an invention. The inventor has to come up with the idea or solution to a problem. To establish patent pending status for the invention, it has to be described and drawings shown that explain how to make and use the invention. The description and drawings are filed with the USPTO as a provisional or nonprovisional patent application.
For provisional patent applications, patent pendency is maintained 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, patent pending status is lost because provisional patent applications are automatically abandoned after a year.
You could also just 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 had been disclosed more than one year ago, then the provisional could not be refiled 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 you 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 patent 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 criteria.
The facts that I like to search for is the inventor’s full name or company name that manufactures or sells the product. Even if the inventor’s name is quite common or the company name is generic, you may still be able to locate the patent application when you have 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. As you add more search filters, the hit list will be reduced to a hopefully more 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.
To conduct the search, you can use the Patent Office’s database, which is the most up to date database. However, you might also consider an easier 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 their 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 they are filed with the Patent Office. 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, if the patent application was filed as a provisional patent application, then these applications are never published. They become available after the corresponding nonprovisional patent application is filed. In this instance, the nonprovisional patent application is published and the provisional patent application is made searchable and accessible to the public 18 months after the filing of the provisional patent application or the first filed patent application in its chain.
Patent applications can be published earlier than 18 months by filing a request for early publication. The request for early publication is made when the inventor wants to accrue provisional patent rights in 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 nonpublication of their patent. These patent applications cannot be found if you search for them.
8. How do you mark a product as patent pending?
US patent laws allow the inventor to mark their products as patent pending if a provisional or nonprovisional patent application has been filed on the invention 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 happens 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, the circle c © is for copyright notice. TM or the circle r ® is for trademarks. Trade secrets can be 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 marking for a patent pending or patented product. Otherwise, others will not respect your rights because you will be perceived as 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 which was discussed above. For more information on patent marking, see Patent marking article [insert link and title]. 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, not just constructive notice of the published patent application under 35 USC 154(d)(1)(B).
If the product is marked 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 ending. Moreover, if the serial number of the patent application is marked 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 actually not patent pending. For example, no patent application was ever filed, or if one was filed, the patent application does not describe the invention.
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 has signed the PCT. It works in the following way:if an inventor files a PCT application, the inventor can file 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. To be patent pending in any of the PCT countries, a national phase patent application based on the PCT application would have to be filed 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.