The term “patent pending” is a legal designation or expression used to describe the interim between a patent application being filed with the United States Patent & Trademark Office (USPTO), and the patent being issued by the USPTO or the application abandoned.
The terms “patent pending” and “patent applied for” are permitted to be used by the inventor so long as a patent application has actually been filed with the USPTO. The patent applicant may then legally mark their invention with the term “patent pending” for the duration that they hold a non-expired provisional application or a pending non-provisional application. So you may be asking yourself, what is the difference between the two, and does it matter?
What is a Provisional Patent?
Think of a provisional patent application as a potential first step in getting a patent. Provisional applications are filed with the USPTO and can help you snag an early filing date. This can be particularly useful for inventors or smaller companies where funding may be tenuous. This is also a potentially useful tool for more mature businesses who are “exploring” new product lines. The only danger with provisional patent applications is that you have one year to file regular (read non-provisional) patent application. Broadly speaking provisional patent applications offer the benefits of a lower cost option which can still provide benefits should litigation occur.
A non-provisional application is simply a US patent application that is not a provisional-application (it’s helpful to consider that the term arose to distinguish what were considered “normal” patents from newly-established provisional ones in 1995). Important notes of distinction between the two types of applications include: the provisional application does not require any claims to be submitted for examination, while the non-provisional application must contain at least one. Additionally, a non-provisional application has the benefit of being able to claim priority to a prior filed application, while the provisional application may not. Either type of application may be rejected by USPTO examiners if they fail to meet the requirements of inventive & non-obvious.
An inventor pursuing protection for their intellectual property may choose to dissuade copy-cats by marking their work with “patent pending”. The purpose of marking “patent pending” is to notify the public, businesses, or potential infringers that they may be liable to damages (more below) if they choose to copy your invention. Such declarations are important when considering that the large backlog of cases at the USPTO may mean your invention will remain in “patent pending” status for several years. It is wise to note that these phrases have no legal standing or effect, but serve only to notify interested parties that an application for a patent has been filed with the USPTO. Protections afforded by a patent do not begin until the patent has been officially granted.
Patent Pending Doesn’t Give You as Many Rights as You Might Have Heard
If declaring “patent pending” fails to provide any legal protection, then you may be wondering what kind of protections you are left with. Luckily, the term still carries weight, as there is a section of the law that provides the patent applicant may receive royalties from copiers or infringes for sales of products and services protected by a resultant patent, known as provisional rights (covered under 35 U.S.C.A.). It should be noted that the provisional rights come with some caveats that may leave the inventor vulnerable:
- First, damages do not begin to accrue until the patent publication date, as opposed to the filing date, meaning provisional rights do not cover back-royalties.
- Second, the copier must have notice of your patent application, meaning they must receive a copy or have otherwise read it. While this may be difficult to prove, you may receive triple damages if it can be shown the infringement was willful.
- Last, and perhaps thorniest of the caveats to navigate when trying to claim provisional rights- the claims in your patent must be substantially identical when the patent application is granted as to what they were when the application was published. This often proves difficult because it is common that changes will be made to the claims covered within the scope of the patent during the prosecution stage, when your patent attorney may have to negotiate with the assigned USPTO examiner.
Due to this commonality, recovery of royalties under the provisional rights section poses a challenge. Apart from provisional rights, it may still be possible to make additional intellectual property claims such as: breach of contract, copyright infringement, trade dress infringement, trade secret misappropriation, or other infringement.
Claiming “patent pending” may also serve in carrying hypothetical weight. Despite difficulty in obtaining provisional rights, you may choose to take a proactive stance in deterring copiers by sending them a Notice letter containing your published patent application. Your letter may range from asking them to cease or to meeting for a licensing discussion. Potential infringers may deem it too risky an investment to copy your intellectual property if the start up costs are high and they think you will be successful in obtaining a patent. Comparatively, they may choose to ignore your letter, as they are not legally obligated to respond, if they conclude you will not be issued a patent, or that their product will not be covered under your patent. There is an additional risk that the copier may choose to design around your patent application after receiving notice, if they feel they can produce something meeting USPTO’s inventive and non-obvious standards.
Once a potential infringer has been notified, you may decide to request that the USPTO accelerate your application’s consideration (current USPTO wait time statistics here), as the USPTO is able to offer prioritized patent examination (also known as TrackOne) under specific circumstances. In some cases however, it may be advantageous to allow a copying competitor to build a market that you are then able to obtain through licensing fees once the patent is granted.
After your patent is granted, it will be protected from infringement under Title 35 of the United States Code so long as it is marked. Patent protection will, “…exclude others from making, using, selling, offering for sale, importing, inducing others to infringe, and/or offering a product specially adapted for practice of the patent.”(35 U.S.C.A. § 154(a)(2)).