And… we’re done! Whew…that’s it! That’s all you need to know, right?
Of course not! You’re reading a legal blog – there’s always more to learn….
Below I share with you 7 questions to ask to better understand what “patent pending” means.
To get started, you may enjoy reading the Wikipedia article on Patent Pending — I did!
One of the funniest things I read in that article was that multiple people over the years have played a fictional character named “Pat Pending”, including this one from Batman in “That Darn Catwoman:”
Don’t remember him? Me neither. Anyway, when you hear me say “patent pending” in this blog, and find yourself getting bored, just think of this guy named Pat Pending and give yourself a chuckle or two.
(And check out that tie! Is that for real? Wow….)
Anyway, let’s get down to business and onto the serious stuff now, shall we?
Question # 1: Has a USPTO Patent Filing Occurred?
This question above is probably the simplest way to express what patent pending means — if the individual or company expressing it is telling the truth, of course.
If an inventor has properly filed a design, utility, or plant patent application with the USPTO and has received a filing receipt, then that means they are officially “patent pending”.
What are the different types of filings? Here they are in no particular order:
Continuation/divisional patent application (for those applications already pending, where additional new and novel aspects are being claimed)
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). Therefore, there is really no benefit for the inventor to publish.
If you scroll down, you’ll see what a filing receipt looks like, with important dates highlighted in different colors below. 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 will start (those 20 years where you get the exclusive rights to make, use, and sell the invention), if this patent application gets granted (which, in case you are wondering, it did – see here).
Next is thegreen highlighted number, which is your application number. This number is 14/121,351 and this number can also be shown without the slash as “14121351” — the “14/” designates the year. So, if you wanted to be very thorough, you’d use the phrase “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.
Something else you should note: this patent application, when the receipt was received, was not published. That means it was not findable by the general public.
As shown in thepurple highlighted area, this is a nonprovisional patent application (you may remember learning about that in this recent post!). 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 occurrence) —provisional 61/959,380 as well.
You can see that those two provisional patent applications were filed on 8/22/2013. That means that 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).
Question # 2: So… is it really “patent pending?”
Let’s imagine someone is on stage talking in front of a startup venture capital fundraising conference. Or perhaps 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 suddenly 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 and understandings fall short of the truth. “Patent pending,” as you (being the reader) understand it, only 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?
As we discussed above, the patent application would need to be public. This means that the priority date (the 371(c) date, if you recall) 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.
In this case, 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 or playing dumb, or perhaps they honestly did not understand the process.
You can search by a few different types of data as well as the query (as of the writing of this blog — find an example below). Just click on “Application Number,” enter it in one of those two formats, then click “Search”.
If you’ve entered the information correctly, it will come back with the following screen, where you can confirm all the applicant and inventor data and see the priority date:
Question # 3: Utility or design?
If they don’t tell you that their patent pending is a design or utility, then this a very good question to ask. It should be a simple, quick answer back.
If its not, that’s reason for concern – perhapsthey 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 — remember, 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 or aesthetics. Conversely, design patents grant ornamentally, not functionality. Most tangible devices that have novel features or functions as well as looks and 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 be able to plainly see what type of patent application it is (see the blue highlight below) from the Application Data tab in Public PAIR. It will say either “utility”, “design”, or “plant”.
Question # 4: Am I required to mark it?
No, you are not required, 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, so 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 and knowledge, they can be held liable to pay triple damages and have to pay for the attorney’s fees of the patent holder plaintiff.
It’s a big deal.
Question # 5: So how do I mark goods?
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 10/299101”
“Patented and patents pending: see http://www…”
Each different type of notice has its pros and cons, but overall, as long as it is 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. 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 commercial aspects of the product.
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 or patent 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 possibly on a wrapper, container, or enclosed case.
Question # 6: Are any legal rights given while patent is pending?
No — no legal authority, grant, or rights are bestowed on the inventor, applicant, or 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 and 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: 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 a 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 cash money!
There are many license and sale deals done covering technology and 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 or licensing party is taking on that risk — the difficulties they will encounter if 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 (and do!) pay money for prospective rights (pending patents).
You should know that they will (if they are smart) be 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.
Question # 7: No longer pending? Abandonment versus grant
When it comes down to it, there are really only two outcomes of a “patent pending” situation. 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 isno longer pending.
Here are some examples of situations where patent applications go abandoned:
Nonprovisional provisional application was not filed within 12 months of the provisional patent application
An office action (when an examiner rejects or objects to the application) is not responded 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 ABC flowchart below (you may recognize it from some of our other posts) which clearly shows that a nonprovisional must be filed within 1 year (12 months, 365 days) after the provisional (see red circlehighlighting “1 Year Maximum”), or else the application goes abandoned.
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 gave 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!
Legal Note: This blog article does not constitute as 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.