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What “Patent Pending” Means for Your Business
August 3rd, 2020
What Does the Term “Patent Pending” Mean?
“Patent Pending” is a term used for products or processes where a patent application has been filed with the United States Patent and Trademark Office (“USPTO”), but a patent has not yet been granted. It serves to notify the public, businesses, and potential infringers that the particular invention has a patent application pending with the anticipation of future patent rights attaching to it once a patent is granted. Once a patent is granted, you can claim priority back to the date of filing, which will give you the rights of patent protection from that date forward. That means that anyone who may have infringed on your invention during that interim period could be liable to you for royalties, damages, seizure, or injunction.
When May You Use the Term “Patent Pending”?
Keep in mind that you may only use this term if a patent application has actually been filed, is pending, and has not yet been granted a patent or been abandoned. The term does not have specific legal power in and of itself, but it is a descriptive representation to the public that needs to be accurate.
Benefits Only Accrue Once Patent is Granted
While an inventor may stamp a product or process with “patent pending” if it meets the requirements above, the inventor cannot protect their invention until the patent is actually granted. The “patent pending” status by itself does not offer you protection. While it lets others know you’ve laid claim to it, you cannot file for any remedies while the patent is still pending if someone copies your invention. This is because it is the patent issuing that then retroactively gives you protection reaching back to the filing date. If no patent is ever granted or if the patent is abandoned, then no rights have come into existence to reach back to the priority date to cover the “patent pending” interim period.
For the avoidance of doubt, you would not be considered to have misrepresented an invention by marking it as “patent pending”, when the patent ends up being denied. However, if it is denied, then you cannot continue to mark it as such. The term refers to both provisional and non-provisional patent applications. However, you also must cease using the term if you do not file a non-provisional patent application within 12 months of filing the provisional patent application. Failing to file within the 12-month period will constitute abandonment.
Why Marking with “Patent Pending” Is Beneficial
Think of it as planting a flag on your invention that lets others know you have filed an application for patent on it. It lets other companies and inventors know that you are on your way to getting patent protection. Companies faced with possible infringement suits will not choose to put their time and money into an invention that would be protected by someone else’s patent. And it also tends to signal something new and exciting to consumers, which can be beneficial. One nuance to keep in mind is that using “patent pending” on the exact invention you describe in the patent application is acceptable, but you will lose any protection you accrue if you start changing the invention in the interim.
While you are not required to do so, you can partner the term “patent pending” with the serial number you receive from the USPTO when you file with them. This more specifically lets competitors know that a patent application is certainly in the works. Martialing evidence in the form of products clearly marked with “patent pending” along with a serial number could strengthen your case that someone knew the invention had an application filed on it and willfully infringed it. And if you can establish an infringer “willfully infringed” on your invention, they could be liable for treble damages.
Furthermore, you could get an injunction issued to a competitor that copies your invention during the interim so that they must stop their actions until the patent process is complete. Then once the patent is actually granted you may be able to sue them for damages from the time of publication.
Penalties for Misuse
If you mark a product or invention with “patent pending” when no patent application has been filed or the application has been abandoned, then you are in violation of deceiving the public. You could be fined up to $500 for each offense, with each offense constituting each mismarked article.
Your Partner in Navigating the Patent Process
An inventor should thoughtfully consider each step of the patent process. Use (or misuse) of the term “patent pending” is a good example of how something seemingly simple ends up being consequential. An experienced patent attorney can help you navigate the process to get you to the right destination with your business.
Categories: Patents