As soon as you file a patent application with the USPTO!

Alright…asked and answered, let’s wrap up folks…

Haha, I’m guessing you want to know more, right? Ok. I guess I can provide a little context for you budding inventors/entrepreneurs out there.

Perhaps some more interesting questions, that go a bit deeper are:

  • What does ‘Patent Pending’ mean?
  • How should I label my product as Patent Pending?
    • What if I don’t have a physical product yet?
    • What if my invention is a composition of matter, method, process, or software?
  • Has the patent application been actually filed?
  • How long can a patent be pending for?
  • What kind of Patent is Pending?
  • Is There a Requirement to Mark?
  • Are any Legal Rights Given While Patent is Pending?
  • How does a Patent Application Lose its Patent Pending Status?

Let’s answer these in turn, as I think they will help guide us to more fully understanding this pending status designation.

What does Patent Pending mean?

It means that there is a patent application pending approval.

Done Again – one liner! Whew…that’s it! We’re done. Right?…. I see…you’re catching on.

Look below, at one of the most famous brands of all time, Rolex. On the back of one of their watches, you can see they have “Patent Pending”. That’s the bare-bones requirement, as you’ll read below. But, they didn’t stop there, you can see that they actually described what was innovative about their pending patent by providing the title “Oyster Gas Escape Valve (Patent Pending)”.

Now, who knows what an oyster gas escape valve is? No, it’s not lunch. I did a little research, and found that this watch was first launched in 1967, and is a very valuable (for collectors) version of the “Sea-Dweller” (see more here).

What’s MORE interesting…is that while this watch was made in small batches in 1967, it wasn’t launched until 1971 in a more public way because they couldn’t get the patent!!! No patent was issued to Rolex for their “Oyster Gas Escape Valve”, as the technology for Helium Release Valves, was what they needed.

The important thing to remember is that they STILL were able to achieve a sense of novelty, intrigue, and ingenuity by simply labeling “patent pending” on their product.

How Should I Label my Product as Patent Pending?

 There is no set way to mark goods with patent pending. I’ve seen a lot of different ways, that seem effective at communicating to consumers/public:

  • “Patent Pending”
  • “Patents Pending”
  • “Pat. Pending”
  • “Patent Pending 10/299101”
  • “Patented and Patents Pending see http://www…” [put your website URL here]

Each different type of notice has pros/cons, but overall – as long as it’s clear what is being conveyed, and the mark is noticeable to someone looking for it, then it will qualify as notice.

There is no one way to emblazon, emboss, or stencil a patent pending mark. Nor is there a requirement for font size, or font type set, etc. The rules are subjective, but as the patent owner, you want to make it as obvious and apparent as possible without detracting too much from the design or commerciability of the product.

If you don’t have a physical product yet, and your invention is hardware related…make one! Haha, I know, its not always that easy – but you simply cannot label “patent pending” if you don’t at least have a prototype to affix the label or imprint it.

That said, if you are still in the planning stages, or if your invention would require a huge financial/time investment to build, you can create informational documents (digital or print) which will describe your invention and/or show it in diagrams/pictures. These documents should have “Patent Pending” on them, as soon as you have actually filed either a provisional or nonprovisional patent application.

What if your invention is a composition of matter, method, process, or software?

There are a lot of products that are just too small or have physical features too delicate to display a patent pending notice. And, of course, there are many patent-eligible/pending inventions that do not have a tangible, physical embodiment such as software, methods, diagnostics, and compositions of matter.

In those cases – it would be best to place the notice on a contract or digital notice, or on a wrapper/container/enclosure.

 

Did they Actually File? Has a USPTO Patent Filing Occurred?

 This is probably the simplest way to express what patent pending means. If the individual or company expressing it is telling the truth, of course.

So, if an inventor has properly filed a design, utility, or plant patent application with the USPTO and has received a filing receipt, then they are officially “Patent Pending”.

What are the different types of filings you ask? Here they are in no particular order:

  • Design Patent Application (note, there is no provisional or nonprovisional bifurcation)
  • Utility Provisional Patent Application
  • Utility Nonprovisional Patent Application
  • Plant Patent Application
  • Continuation/Divisional Patent Application (for those applications already pending, where additional new/novel aspects are being claimed)

So, it does come down to proving that a filing did occur (if ever asked), so the filing receipt is what we’re hanging our hat on.

Note, that as the inventor, you may not want to publish a filing receipt, as it might tip off competitors and it is certainly WAY before the patent application gets published (which is 18 months after the priority date). So, there’s no benefit for the inventor to publish.

Here is what a filing receipt looks like, with important dates highlighted in different colors below. So, you will see that this “official” filing receipt is sent within a couple weeks after filing. The 371(c) priority filing date, highlighted in red below, was 8/21/2014. But, the filing receipt wasn’t mailed until 9/4/2014 (see just below barcode).

This is THE most important part of the receipt, as this date will serve as the date for which the 20 years (that you get the exclusive rights to make/use/sell the invention) will start, if this patent application gets granted (which it later did – see here).

Next is the green highlighted number, which is your application number. This number is “14/121,351”, and can also be shown without the slash as “14121351”, the “14/” just designates the year. So, if you wanted to be VERY thorough, you’d indicate “Patent Pending Application Number 14121351”.

You can and should also confirm that the inventors were properly identified, you can see the inventor and applicant information in the blue highlighted area.

Another key point is that this patent application, when the receipt was received, was NOT published. Meaning, it was not findable by the general public.

Please note, in the purple highlighted area, that this is a Nonprovisional patent Application. You can tell this because it is “claiming benefit” of an earlier filed provisional patent application “61/959,379”, and it’s also claiming benefit of a second (which is somewhat rare) provisional “61/959,380” as well.

You can see that those two provisional patent applications were filed on 8/22/2013. So, this patent has been “PATENT PENDING” since 8/22/2013.

The Nonprovisional patent application was filed almost a year later (8/21/2014), and therefore may make a priority claim back to the provisional filing date.

ALSO – don’t miss the purple arrow showing when the pending patent application is forecasted to be published: 2/26/2015. This is exactly 18 months after the Provisional patent application filing date (which was 8/22/2013).

How long can a patent be pending for? Is it Really (Still) Patent Pending?

 Alright, so someone is on stage talking in front of a startup venture capital fundraising conference, or you flip on the latest episode of Shark Tank, and you hear someone spout out “Oh, and by the way, this product is patent pending…”

You can see the eyebrows raise, and interest in the product has increased, albeit slightly.

Most everyone knows just enough about patent law to know that when someone says “patent pending” that means that they have some rights or have at least asserted some rights and protection around the product.

Of course, most people’s perceptions/understandings fall short of the truth. “Patent pending”, as you (being the reader) understand that it just means that a patent application was submitted. No rights, no grant, no novelty, or ownership of any kind.

But… can you tell if someone is bluffing?

In other words, how can you tell if they really are patent pending?

Well, as we discussed above, the patent application would need to be PUBLIC. This means that the priority date (371(c) date) of the patent application would have to be more than 18 months ago! So, if it was recently filed, you will not be able to find it.

So, you can pull the individual aside after the show, and ask them, so – where are you in the process? Did you file a provisional or nonprovisional? Design? When did you file?

These are all really good questions, and if not met with solid answers, you will quickly see that someone may be bluffing, be playing dumb, or honestly not understand the process.

If you were going to do some recon on the person or invention, and you were able to get the patent application number from them, you should go to PAIR on the USPTO.gov website.

The full URL is: https://portal.uspto.gov/pair/PublicPair

You can search by a few different types of data, and the querry (as of the writing of this blog is shown below). You just click on “Application Number” enter it in one of those two formats, then click “Search”.

So, if you entered the information correctly, it will come back with the following screen, where you can confirm ALL the applicant/inventor data and see the priority date:

What Kind of Patent Pending is it? Utility or Design?

 If they don’t tell you that their “patent pending” is a design or utility, this a VERY good question to ask. It should be a simple, quick answer back. If its not, that’s reason for concern – perhaps they don’t know…

Remember, that if they mention “provisional” patent application or “provisional pending patent application” that automatically means that they have filed a UTILITY application. Because, there are no provisional applications for design applications.

As you’ve probably read in my other articles, utility patents grant rights for FUNCTIONALITY, not design/aesthetics. Conversely, design patents grant ORNAMENTALITY, not functionality. Most tangible devices that have novel features/functions as well as looks/design should get BOTH utility and design protection to thwart would-be infringers from ripping them off.

As you saw in the above example, if you’re lucky enough to get the actual patent application number AND the patent 371(c) date (priority date) was more than 18 months ago (and therefore the application has been published), you will see plainly what “TYPE” of patent application it is (see blue highlight) from the Application Data tab in Public PAIR. It will say either “Utility”, “Design”, or “Plant”.

Is There a Requirement to Mark?

 

No, but it’s a good idea.

 

When an inventor of a product indicates that a product is patent pending and marks it as such, it is putting the consumers (and the public at large) on NOTICE to the fact that there are exclusive rights pending on this, and don’t you go making your own without permission.

While this notice is a very weak form, it can be used against an infringer later in a damages case whereby parties can be demonstrated to have purchased the product, and the “Patent Pending” notice is clearly shown.

In patent litigation, if the plaintiff (patent holder) can prove that a defendant knew about the rights (or even prospective) rights as to the invention, and disregarded that notice/knowledge, they can be held liable to pay TRIPLE damages and have to pay for the attorney’s fees of the patent holder plaintiff…so its a big deal.

 

Are any Legal Rights Given While Patent is Pending?

 No. No legal authority, grant, or rights are bestowed on the inventor/applicant/assignee of an invention that is merely patent pending.

However, like I mentioned above, you do have the ability to put parties on notice as to your “prospective rights”, and that could be used to show knowledge/notice to support a case of infringement and even “willful infringement” down the road once the patent rights do grant.

This is a scary part about the patent process, is that if you as the inventor have decided to speak about your invention, or even publicize the invention prior to rights granting – you are in effect gambling that that patent will be granted.

Otherwise, you’ve now told the public about what you’re doing, and how to do it, and if your patent rights do not grant, you’ve created conditions to make competition easier.

Also, don’t forget about securing other forms of IP to help thwart would-be copycats. You can secure trademark and copyright protection for any business dealings or artistic creations that have been born of the new technology.

BUT…even scary times can mean $$$!

There are MANY license and sale deals done covering technology/patents while they are still pending. That said, the amount of money given for prospective rights, will be less than if the rights have been granted (5% vs. 7% royalties for example). This is because the buying/licensing party is taking the risk that they cannot convince the USPTO patent examiner that the invention should be issued.

This means that licensees or buyers of certain kinds of technology can/do pay money for prospective rights (pending patents).

You should know that they will (if they are smart) hiring their own Patent Attorney(s) to evaluate the patent application as filed for novelty, nonobviousness, validity, and enforceability. They’re not going to pay big money for just anything.

 

No Longer Pending?: Abandonment or Grant

So, there are really only two outcomes of a “patent pending”. Either the patent gets granted, or it goes “abandoned”. The important piece of this is that as soon as it reaches either of those status points, it is NO LONGER PENDING.

Here are some examples of when patent applications go abandoned:

  • No Nonprovisional Provisional Application filed within 12 months of the Provisional patent Application.
  • An office action (when an examiner rejects/objects to the application) goes unresponded to within the statutory period (usually 6 months)
  • A granted patent where maintenance fees are not timely paid

The first one is a BIGGIE… see the below ABC flowchart (Below), which clearly shows that a Nonprovisional MUST be filed within 1 year (12 months, 365 days) after the provisional (see red circle highlighting “1 Year Maximum”), or else the application goes abandoned.

In Conclusion

There you have it: a general rundown of a patent pending status! While it may simply mean that there is a patent application pending approval, there are a lot more layers to that situation than one may initially think. Hopefully this blog post gives you some new perspective and we hope that you’ll take some time to check out or other posts and continue to learn all about the patent process!

Tell us: how did you understand “patent pending” to be before this post? How many times have you come across the phrase “patent pending” — either on products or announced by inventors? Share your thoughts in the comments below!

Do you see your idea coming to life in the future? Think you’ll need a patent for it? Go ahead and click here to book your free consultation with us to get started!

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.

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.