"Patent Pending" Status For Inventors
The “Technology Revolution” of the past decades has seen a dramatic rise in the number of applications that have reached the U.S. Patent and Trademark Office.
Unfortunately, this surge in the number of applications has resulted in substantial delays before a patent is issued. In order to protect an individual inventor’s intellectual property rights, the term “Patent Pending” (or some acronym that clearly conveys the same meaning) is often used in marketing to denote that a patent is being sought specifically for that product.
This posting will review what legal rights of the inventor are protected by a “Patent Pending” declaration, how to legally use the statement, and the remedies available if an inventor feels that his intellectual property is being used without his permission.
What Is “Patent Pending” and How Is It Obtained?
“Patent Pending” is the term used to notify others that a patent application has been filed but has not yet been issued.
In the United States the courts have held that there is no patent protection until a patent is formally issued, but patent protection is then retroactive to the date of the original application. For example, if a patent was applied for on January 1, 2010 but was not approved and issued until June 1, 2016, full protection of the patent laws is considered to have begun on the date the application was filed (January 1, 2010) even though the patent wasn’t issued until June 1, 2016. The “lifetime” of the patent is considered as beginning on the latter date.
In order to legally use the expression “Patent Pending” there must be a valid and active patent application on file with the U.S. Patent and Trademark Office. The term may also be used if a provisional patent application has been filed. If there is no active or provisional patent application on file, then use of the term is considered to be deceptive and the user may be subject to civil penalties. However, it is important to understand the distinction between a provisional patent application and a “regular” application.
A provisional patent application is usually filed in order to establish a “first filing date” in cases where there is the danger that a competitor might file a patent application for a similar invention. Provisional applications will expire one year from the date they are issued unless converted into a regular patent application. Provisional applicants may use the term “Patent Pending,” but only for one year unless the provisional application is converted to a complete application. If the provisional application is not converted, it is considered to be “abandoned” and can no longer be used to claim “Pending” status.
There is an important caveat to be considered regarding provisional applications versus “regular” or “formal” application that could later cause problems for the unwary inventor.
There are a number of companies advertising, usually with a paid celebrity endorsement, that they will file a patent for a fee that is substantially lower than those charged by a patent or intellectual property attorney. In some cases these denizens of late night television are in actuality only filing a provisional application that will expire in a year, a fact that is usually buried deep within the agreement signed by an unwary inventor.
Unless an inventor has had legal training or extensive experience in dealing with patent law it is always more prudent to retain an attorney with experience in this potentially complex branch of civil practice.
What Rights Are Protected By “Patent Pending” Status?
As earlier stated, full protection of an inventor’s exclusive rights to an invention under patent law does not exist until a patent is formally issued. However, those rights are then “carried back” to the date the patent application was filed. Although there is no legal requirement that the words “Patent Pending” be used to protect an inventor’s rights, if they are clearly stated as being connected with the use of a product this will serve to defeat a defense of “unintentional infringement” if a lawsuit is later filed alleging patent infringement.
Businesses do not like patent infringement lawsuits because, in addition to the high costs involved in defending against such actions and possible negative publicity such suits may bring, there is the prospect that they could be held liable for back royalties, injunctive relief, or even seizure of assets to secure payment of a judgement. If the infringement is found to be deliberate, then the infringing party may be liable for a civil award of punitive damages as well.
This same wariness of infringement actions can also work against an inventor who is attempting to market an invention that is under the provisional coverage of “Patent Pending” rather than a regular patent. Since there is no guarantee that a pending application will be approved, or that there has been no infringement of someone else’s patent, prudent companies will stay away from inventors attempting to market a “Patent Pending” product. This is also true of private investors and/or venture capital investment firms.
"Patent Pending” is used to protect an inventor’s rights under the applicable patent law by serving notice that a patent has been applied for and that full legal protection of those rights is expected to be forthcoming. It is the responsibility of the applicant to use the term to advise others of the potential patent protected status of a product as well as to insure that the term is used in compliance with the patent laws.
A video to answer more of your "patent pending" questions...
What does Patent Pending mean? When can you use the phrase? When do you have to remove the phrase? What are the benefits of using the phrase?