Can You Sue for Patent Infringement While Your Patent Is Pending?

Can you sue for patent infringement while your patent is pending? Learn what rights inventors have before approval and when enforcement begins.

You’ve filed your patent application, and now you’ve discovered someone making, using, or selling something that looks suspiciously similar to your invention. Naturally, you want to know: Can you sue them for patent infringement?

Here’s the short answer: You can file a lawsuit, but you generally cannot enforce patent rights while your application is still pending.

I know that’s frustrating, especially when you’ve invested time, money, and effort into protecting your invention. But there’s an important difference between having a patent application on file and actually owning an issued patent.

As a Registered USPTO Patent Attorney, I want inventors to understand what protection they have during the patent-pending stage, how notifying potential infringers can help, and when they can take legal action.

Let’s break it down.

1. Can You Sue for Patent Infringement While Your Patent Is Pending?

Technically, you can sue just about anyone for just about anything. You can file a lawsuit and allege that someone has done something wrong.

But should you sue someone for patent infringement when your patent application is still pending?

Generally, no. You don’t have enforceable patent rights until the USPTO grants your patent.

Filing a patent application doesn’t automatically give you the legal right to stop someone else from making, using, selling, or offering to sell your invention.

There’s a big difference between these two situations:

• Patent pending: Your application is under review by the United States Patent and Trademark Office (USPTO). You don’t yet have an issued patent that you can enforce.
• Patent granted: The USPTO has issued your patent, giving you enforceable rights under the patent laws, subject to the scope and validity of your claims.

Think of it this way: Filing your application is an important step toward securing your intellectual property, but it isn’t the finish line.

You need that issued patent before you can bring a traditional patent infringement claim based on the patent.

If you’re still learning about the process, check out our guide to the utility patent process.

2. What Rights Do You Have During the Patent-Pending Stage?

Now, here’s where things get interesting.

Although you generally can’t enforce your patent while your application is pending, you aren’t necessarily without options.

There are certain protections available to you during this period. We sometimes refer to these as pseudo-rights because they don’t give you the same enforcement power as an issued patent.

One important tool is the ability to put potential infringers on notice.

What Does Putting Someone on Notice Mean?

Let’s say you’ve filed a patent application, and you discover a company making a product that appears to use the technology you’ve described in your application.

You may want to notify that company that your patent application exists.

This is commonly done through a notice letter or a cease-and-desist letter, depending on the circumstances and the legal position you’re in.

The purpose is to make the other party aware of your pending application and the potential patent rights you’re seeking.

Why does that matter?

Because what happens after someone receives that notice may become important if your patent eventually gets granted.

Why Documentation Matters

If you decide to notify a potential infringer, documenting that communication is important.

For example, you might use:

• Certified mail with a signature confirming delivery.
• A written notice letter.
• Other documented communications showing that the party received notice.

You want to establish that the other party actually knew about your pending patent application.

However, remember that sending a notice letter doesn’t automatically establish infringement or create enforceable patent rights.

You still need an issued patent before pursuing a traditional infringement claim.

3. Can Notifying an Infringer Help You Recover More Damages Later?

Here’s one of the most important reasons to understand patent-pending notice.

Under certain circumstances, notifying a potential infringer before your patent is granted may help establish the knowledge element relevant to enhanced damages if infringement continues after issuance.

Let’s explain.

What Are Treble Damages?

If someone infringes an issued patent, the court may award damages to compensate the patent owner.

In certain exceptional circumstances involving egregious infringement, a court can increase the damages award by up to three times the amount of compensatory damages.

This is called treble damages or enhanced damages.

For example, imagine a company continues selling a product after receiving notice of your patent application.

Later, your patent gets granted, and the company continues making or selling products that infringe the issued patent claims.

Depending on the facts, the earlier notice may become relevant when evaluating whether the company knowingly engaged in conduct that justifies enhanced damages.

But there’s an important distinction here:

Simply notifying someone about a pending patent application does not automatically qualify you for treble damages.

The court considers the circumstances, including the infringer’s conduct, the knowledge involved, and whether the infringement was sufficiently egregious to justify enhanced damages.

Attorney fees may also be available in exceptional patent cases under applicable law.

The takeaway? Documenting communications during the patent-pending stage can be valuable, but it doesn’t guarantee a larger recovery later.

4. Doesn’t the USPTO Already Notify the Public About My Patent Application?

Yes! And this is another important part of the process.

The USPTO generally publishes qualifying nonprovisional patent applications approximately 18 months after their earliest effective filing date.

This publication makes your application publicly available.

In other words, the public can see that you’ve filed an application describing your invention and the patent protection you’re seeking.

You may hear this referred to as constructive notice.

Actual Notice vs. Constructive Notice

There are two important concepts to understand:

The USPTO’s publication process helps make your application publicly accessible.

However, publication doesn’t mean everyone has personally read it, and it doesn’t give you the same rights as an issued patent.

That’s why directly notifying a specific company may be worth considering when you have reason to believe it’s using technology covered by your pending application.

5. When Can You Actually Enforce Your Patent Rights?

Here’s the big milestone you’re waiting for: Your patent grant.

Once the USPTO approves your application and issues your patent, you have an enforceable patent that can potentially support an infringement lawsuit.

At that point, you can evaluate whether another party is making, using, selling, offering to sell, or importing a product or process that falls within the scope of your patent claims.

Your patent claims are especially important because they define the legal boundaries of your protection.

It’s not enough for another product to simply look similar to yours. You need to evaluate the actual patent claims and compare them with the accused product or process.

What Happens After Your Patent Is Granted?

Once you have your issued patent, you can explore several enforcement options:

1. Investigate potential infringement: Determine whether another company is using technology covered by your patent claims.
2. Send a notice or cease-and-desist letter: Formally communicate your concerns and explain the patent rights you believe are being violated.
3. Explore licensing: Negotiate an agreement that allows another company to use your patented technology in exchange for compensation.
4. Consider litigation: If appropriate, pursue a patent infringement lawsuit in federal court.

You may also have options before the U.S. International Trade Commission (ITC) when the circumstances and jurisdictional requirements are met.

For more information, read our guide to patent litigation.

6. Does the Same Rule Apply to Design Patents?

Yes. The same basic principle applies to design patents.

A design patent protects the ornamental appearance of an article, while a utility patent protects how an invention works or how it’s used.

But whether you’re pursuing a utility patent or a design patent, you generally need an issued patent before you can bring an infringement claim based on that patent.

Simply filing a design patent application doesn’t give you immediate enforcement rights.

You still need to wait until the USPTO issues the patent.

If you’re unsure which type of patent protection fits your invention, take a look at our guide to filing a design patent.

Key Takeaways: Patent Pending vs. Patent Granted

Let’s bring everything together.

Here’s what you should remember if someone starts copying your invention while your patent application is pending:

• You generally cannot enforce a pending patent application. You need an issued patent before bringing a traditional patent infringement claim.
• You can notify potential infringers. A documented notice letter may help establish that someone knew about your pending application.
• The USPTO publishes qualifying applications. This makes your application publicly accessible, generally around 18 months after the earliest effective filing date.
• Notice may matter later. Depending on the circumstances, it may be relevant to enhanced damages if infringement continues after your patent is granted.
• An issued patent gives you enforceable rights. Once your patent is granted, you can evaluate potential infringement and consider licensing or litigation.

Here’s my biggest piece of advice: Don’t confuse having a patent application with having an issued patent. They’re two very different stages of the intellectual property process.

So, if someone is copying your invention today, what should you do? Start by understanding exactly what protection you have, document what’s happening, and get legal guidance before sending threats or taking enforcement action.

It’s my hope that this article gives you the knowledge and clarity you need to Go Big and Go Bold℠!

If you have questions about protecting your invention or dealing with potential infringement, book a free discovery call with Bold Patents. We’d love to help.

Legal Note

Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation. No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article.