3 Steps to Take Once your Invention is Patent Pending

After filing your patent application and becoming patent pending, you should never just wait for the USPTO, wait to time the market out just right, or wait until your product is perfect. The invention will never be perfect, and you waste key opportunities by waiting. There are three steps to take once your invention is patent pending in order to improve your chances of commercial success with your invention and get the most from your invention.

What Does Patent Pending Mean?

Patent pending means that the product has a patent application associated with it that has been filed with its fees paid. The patent application is pending approval, but it could also be denied by the U.S. Patent and Trademark Office (USPTO). The patent pending status only lasts for a limited period of time:

• Provisional patent applications. Patent pending status under a provisional application lasts for 12 months. If no nonprovisional application is filed at the end of these 12 months, the patent application is abandoned, and the patent pending status no longer applies. If a nonprovisional application is filed, then the patent pending status continues.

• Nonprovisional patent applications. After filing a full, nonprovisional patent application, patent pending applies until the USPTO reaches a final decision. The timeline for this varies significantly, and currently averages between 29.3 and 45.2 months.

Step 1: Know What Type of Patent Application You Have Pending

There are three main types of patents that can be filed at the USPTO:

• Design patent applications
• Utility patent applications
  • Provisional
  • Non-Provisional
  • Continuation, continuation-in-part (CIP), or divisional
• Plant patent application

Each type of patent addresses a different type of invention or a different aspect of an invention. If you’re not sure, just ask your attorney and have them confirm it. You don’t want to get this wrong, as it will affect which course of action is best for you.

Design Patent Application

If you filed a Design patent application, the focus was on the drawings. This is because a design patent protects the appearance of a product or the design applied to it. Hopefully, you will someday own the 3D representation of your product and be able to sell and market it. This is what makes those drawings super important.

Because there is no “provisional” design patent available, you can only file once you have a complete application, and this will be examined by the USPTO straight away. Design patents also tend to be processed faster because there are fewer of them, so time is of the essence for you to complete these steps. Go to Step 2.

Utility Patent Application

If you filed a utility patent application, you wrote out everything there is to know about your invention, how it functions, its use, and more. You also submitted a lot of drawings to help explain each of those aspects of your invention.

You need to know whether you filed a provisional, nonprovisional, or continuation. If you filed a provisional patent application, you’ve got more time on your hands, and thus more opportunity to prepare to go to market. If you file a nonprovisional or a continuation of a prior-filed patent application, then you’ve got less time, and you need to focus. Move forward to Step 2.

Plant Patent Application

If you’ve come up with a novel botanical plant and have just submitted your application, you’ve likely done a ton of work on the specification where you had to explain, at the molecular level, how to make and reproduce your plant variety. There are no provisional Plant patent applications, so what you filed is the equivalent of filing a nonprovisional utility patent application. Time is of the essence, as the USPTO examination will be starting soon.

Step 2: Label it; Build it; Test it; Sell it; Improve it; Repeat!

It’s important that you properly label “patent pending” on your product, whether you are putting together digital renderings or making physical products, whenever you share them with the public or third parties. You can put it on the packaging if it’s too hard to put it on the product itself. These two words will help you in any future litigation if you can show that the party was aware of your patent-pending rights.

Taking action as soon as possible is ideal. Don’t squander the time it takes to get your patent granted, since it could be upwards of three years. Use this time to build, test, and refine your invention, whether that is on your own or with other parties. This helps you learn a great deal about how to improve and change your invention for better results when it reaches the market.

Once you sell it to the public, you’ll get more time to change and improve the product. The benefit of making changes before your patent is granted is that you can update your patent application while it’s pending to include and protect the improvements or changes that you find while testing and selling. Here’s how to do that for each patent application type.

Design Patent Applications:

For design patents, you’re filing this patent application with locked-in to the figures and brief descriptions you submitted already.

There are fewer options to modify the patent compared to utility patents that allow for provisional applications. Don’t give up, though, because you can file what are called continuation applications. These apply to any new ornamental shapes or substantial changes to your design even while the first application, called the parent application, is pending.

Design patent applications are usually more straightforward than utility patent applications, and usually carry a smaller financial burden. So, the worst-case scenario after doing your market testing is that if you decide to sell a new design, you can file a new design patent application before going to market.

Utility and Plant Patent Applications:

If you filed a provisional patent application, you’re in the ideal position to iterate, change, and improve your invention during the entire 12 months you have before your final and formal patent application must be submitted.

You want to do as much development on your product or services as possible to confirm and validate that your invention is a market success. This includes:

• Working with a manufacturer to make sure the product can be built well and with minimal cost to improve your margins when you sell it
• Getting the proper feedback loops in place with customers and test groups to give you valuable information on what is not working well so you can adjust

All these changes, updates, and improvements can usually be added into the nonprovisional application prior to filing. Occasionally, the improvements are so significant that they will require a separate patent application to protect them. Check with your patent attorney to confirm what the right option for your invention is.

Step 3: Don’t Get One Patent, File a Continuation Application

For any type of patent applications that are still pending, you could file continuation applications. Before your first application gets granted, you may want to file at least one continuation or child application. This secures more rights and protection than you were awarded on the first one.

Whether or not you choose to file child patents depends on several factors, including:

• Your type of invention
• Your budget
• The benefits of continuing to update and change the invention
• The scope of your original patent and what rights it grants you
• What commercial opportunities there are for your invention
• The current competitive landscape for your product

If they are right for your invention, there are several benefits to using child patents.

After submitting your full application, the USPTO examiner may come back with an office action. One type of office action requests that the original application claims are modified, usually narrowed, to get the claim to be granted. By filing a continuation, you can attempt to broaden those claims that you narrowed. The other major benefit of continuation applications is applying your improvements and changes from testing and selling.

The last benefit of having a pending application is enforcement. This is important if you find that your product is being infringed on, meaning a competitor is ripping you off or copying your product. When you seek a settlement for infringement, you will have much more power if you’re able to alter your pending application to prevent their infringement, even if they try to design around the initial patent filing.

FAQs

What Are the Steps to Patent an Invention?

The steps to patent an invention include 1) conducting a patent and art search for inventions similar to your invention and 2) determining whether the invention is patentable under one of the types of patents. Then you should 3) document your invention in order to 4) draft the patent application. The application should include the specifications of the invention and much more. Then you 5) file with the USPTO, 7) wait for examination, and 6) respond to any office actions.

What Happens After Securing Patent Pending?

After securing patent pending, you have to wait for the USPTO to make its decision on your patent application. If your patent pending status is part of a provisional patent, then you need to make your nonprovisional and full application within 12 months. After filing a nonprovisional patent, the process can take between 29 and 45 months on average. The examination process ends when the USPTO provides a final answer to deny or approve your patent.

What Are the Three Conditions for an Invention to Be Granted a Patent?

For an invention to be granted a patent, you must meet several conditions, including that the invention 1) is novel and has not been made before, 2) must actually exist and be able to be used, and 3) not be an obvious alteration of an existing invention to someone with knowledge in the field. There are other conditions, including meeting the definition of a utility, design, or plant patent. An application must have instructions on making and using the invention.

How Much Does a 20-Year Patent Cost?

The amount that a 20-year patent costs depends on the type of patent and whether you qualify for reduced fees. A 20-year patent can refer to either a plant patent or a utility patent. Utility patents are generally more costly than plant patents. A utility patent filing fee is $350, while a plant patent filing fee is $240. There are also examination fees, patent search fees, and issue fees. You may consider the costs of professionals like patent attorneys.

Work With Bold Patents and Hire a Patent Attorney You Can Rely On

It’s important that you know what type of application you have pending, properly label it, then test, build, and sell your invention so you can learn and improve it prior to the patent being granted. Then, don’t stop at just one patent, but build a portfolio that will help you enforce and monetize your invention best.

When you hire a patent attorney, they can help you understand your options. Reach out to Bold Patents today.