Inventors think since their product is patent pending, they can threaten the competition with a lawsuit. “I’m suing you. Stop copying my product.” is what they say. The competition believes nothing’s at risk. So, who cares?
Who’s right? Both are partially right and partially wrong. Let’s dive in.
Rights of the inventor due to patent pending
An inventor can’t sue anyone with a patent pending (i.e., just a pending application for patent) because patent pending infringement does not exist.
Patent pending simply means you filed an application with the Patent Office (i.e., USPTO). You don’t have your patent yet.
Later, I’ll explain why the competition shouldn’t just ignore your threat of future litigation.
The inventor can send a warning to the competition. But, the warning isn’t a threat of impending litigation. Rather, it’s a threat of future damages and injunction. IF you copy my product and IF my patent gets granted, I’m suing you. That’s a lot of ifs. So, you might wonder as an inventor, why should you even get your product patent pending, if you can’t sue anyone for just being patent pending.
And, here’s why.
Patent pending gives you a PRIORITY DATE. Patent pending isn’t about what you can assert against others at this moment in time. It’s really about who the patent office would consider the true inventor later on.
The one with the earlier priority wins that battle between the two inventors. When you have priority, you can have the confidence to start marketing your product. No one can see your product and steal your idea away by filing an application later on. Between you and any other person, you would win the race to the patent office. And, that’s the primary value when you’re patent pending.
A second reason to get a patent pending is that you can actually ask for damages from a period of time before the date the patent was granted. You can get damages from the infringer after the patent grants. That’s when damages start to add up. But, there’s a special rule that allows you to get damages from a period of time before the patent was granted.
If your patent was granted in January, you can get damages for the December of the prior year. But that would only occur under certain conditions.
One of the requirements is you have to give the infringer actual knowledge of your patent application.
Steps competition should take to mitigate future liability from patent pending
Now let’s talk to the competition and see what they ought to do.
As I mentioned before, there are a lot of IFs to be liable when someone sends you a warning letter. It’s a good sign though if they only mention that their product is patent pending. They don’t have a patent. Otherwise, they would have told you so.
Even though their application is just pending, you still need to be aware that you could be sued for patent infringement later on and you could be liable for back-dated money damages if their patent is granted.
But that’s a big IF because in 2020, the rejection rate was 38.3 % for all patent applications that were filed. There’s a huge percentage that gets rejected but there’s also a big percentage that matures into a patent. So, I wouldn’t ignore the letter.
At that very moment, it may not be the most pressing issue. But, there are a couple of things that you ought to do.
First, you ought to figure out whether the application is likely to be granted as a patent and track the progress of the application. Locate and read through the image file wrapper. It contains all of the written communications between the inventor and the patent office and you can see how the conversation is going. If you see a lot of rejections, it’s not going well for the inventor. But that doesn’t mean that the inventor isn’t going to get a patent. It just means that at that moment in time, it doesn’t look well.
The second thing you ought to do is have the USPTO send you an automatic update when there’s a communication between the USPTO and the inventor. All you have to do is set up a MyUSPTO account.