The Ins and Outs of Patent Pending

What Does “Patent Pending” Mean?

The term “patent pending” refers to a patent application that is pending before the United States Patent and Trademark Office (USPTO). This means that the application has been filed with the USPTO, the application is pending with the USPTO, but no patent has been granted or issued.

What Kinds of Patent Applications Can Be “Patent Pending?”

A patent application that is “patent pending” may be a provisional application or a non-provisional application in the case of utility patent applications. It also may be a pending design patent application or plant patent application depending on the subject matter. Regardless what type of application is filed to obtain patent protection, an invention is considered “patent pending” at the time when the application is filed.

Requirements for a Patent Application to be “Patent Pending”

A provisional application may remain “patent pending” during the year that the provisional application is active and may continue to be “patent pending” once converted to a non-provisional application. However, if the provisional application expires after it has been on file for one year without a non-provisional application being filed, the invention is no longer “patent pending.” A provisional application must describe the invention. If the invention is not described so that one who is familiar with the subject matter of the invention could make or use the invention by reviewing the patent application, while the application would be “patent pending,” it may not have much value. Other than describing the invention, a provisional application does not require formalities, other than submission of the proper fee, as it is not substantively examined by the USPTO.

With non-provisional utility patent applications, as well as design and plant patent applications, the invention is patent pending if the application has not gone abandoned during the examination process or until the patent application issues as a patent. If the application issues as a patent, or expires or goes abandoned, the invention should no longer be identified as “patent pending.”

The patent examination process can be quite lengthy, often taking anywhere between 1 and 3 years for a patent to issue.  Sometimes applicants believe that their inventions are no longer “patent pending” because the USPTO rejects the patent application, such as through an office action (rejection).  However, the “patent pending” label can be used for the entirety of the examination process until either the patent issues or the application expires. 

Benefits of “Patent Pending” Status

Regardless what type of application has been filed during the patent registration process, applicants want to have “patent pending” status for a variety of reasons. Filing a patent application, and gaining “patent pending” status, generally establishes a filing date (or a priority date) for the patent application. This may be helpful in a scenario where there is a race to the USPTO to attempt to establish that the applicant was first to file its patent application. In addition, once the patent application is filed, and the invention is “patent pending,” the applicant may proceed with marketing the invention with less fear that the applicant’s marketing actions could affect patentability of the invention.

Applicants may wish to identify an invention as “patent pending” to provide notice to the public that steps have been taken to protect the invention. This may be advantageous to deter competitors from copying the invention. Competitors may not want to develop products that may run the risk of being infringing, if the patent were granted. It also may be advantageous to potential investors or customers that may purchase the invention to let them know that the invention may be protected. This could entice some customers to buy a product or process that is “patent pending” because it may be considered more technologically advanced or better than other products in some circumstances.

Limitations of “Patent Pending” Notices and Lawsuits Based on Pending Patent Applications

It is important to note that “patent pending” status does not protect the invention, and the application itself does not provide the inventor or applicant any legal protection. Thus, the “patent pending” is essentially providing notice that the patent process is occurring, and it may provide potential infringers a warning that steps are being taken to protect the invention.

While there may be limited circumstances where a lawsuit may be filed based on a pending patent application, typically one cannot sue for patent infringement until a patent issues. Those limited circumstances involve a patent application that has been published (which typically occurs 18 months after the earliest filing date associated with the patent application), the patent has been granted, the claims in the granted patent are similar or identical to the claims in the published patent application, and the accused infringer must have received actual notice of the published patent application. If these requirements are met, the accused infringer may be held liable for sales of the infringing product both before and after the patent grant, with liability extending back to the date when the patent application was published. While the potential to sue for infringement based on a pending patent application exists, this litigation typically does not arise because the patent claims usually change during the examination process. Thus, the claims in the published patent application would not be similar or identical to those in the granted patent.

There is no guarantee that a “patent pending” invention will result in a patent.  A patent applicant has to weigh the risk of losing business while waiting for a patent to hopefully be granted against the potential for copycat products to come on the market if the patent applicant sells product including the “patent pending” invention while the patent application is awaiting examination and possible issuance into a patent.  However, it should be appreciated that selling a “patent pending” product will not affect the patent application as long as the description in the patent application adequately describes the product being sold.

How to Mark an Invention as “Patent Pending”

There is not a specific way to mark a product with a “patent pending” notice. Typically, products, packaging, or advertisements may just include the phrase “patent pending.” Other phrases such as “patent applied for” or “Pat. Pend.” or other words or phrases indicating that a patent application has been filed may be used. No serial number associated with the patent application need be included, particularly in the case of provisional patent applications and design patent applications, because those applications are not publicly available to access until a patent issues. Omission of the serial number also can be helpful in an instance where more than one patent application may be pending that covers the same product. In such an instance, it is not necessary to identify that “patent pending” or other similar wording refers to more than one patent application.

If a “patent pending” notice is appended to a product, the product should embody the subject matter included in the patent application. If the product changes such that the patent application no longer describes the product, then the “patent pending” notice should be removed unless an updated patent application or a new patent application is filed to reflect those changes.

A “patent pending” label may be affixed to a website to put the public on notice that a product or process being offered or promoted through the website may include an invention that may be included in a patent application.  While this type of virtual marking on a website may be sufficient to provide notice of “patent pending” status, it is also recommended to mark any physical products (or documents such as product manuals or instructions) as “patent pending” as well if applicable.

When Not to Mark as “Patent Pending”

Further, a “patent pending” notice should not be used when no patent application has been filed. In fact, using such a notice could be considered false marking, which can be punishable by fine. The fine can be up to $500 per offense, which could be substantial if a high volume of goods is sold containing the “patent pending” notice, and each good sold is an offense.

International “Patent Pending” Status

Filing a patent application in the USPTO does not confer international “patent pending” status. However, if the US applicant wishes to protect the invention internationally, it is possible to file an application under the Patent Cooperation Treaty (PCT) which can preserve the applicant’s rights to later file in all countries that are covered under the PCT. Even filing a PCT application does not automatically give the applicant “patent pending” status in specific countries. The applicant would still have to file the country-specific applications (sometimes referred to as a national phase application) later. If the applicant files a US patent application first, typically the applicant has up to 12 months after that filing to submit the PCT application. The applicant has up to 30 or 31 months (depending on the country) from the filing date of the first-filed patent application to file the PCT application in specific countries. For more information, see our international patent page.

For more insights on the patent application process, see our Patent Services Overview and Industry Focused Legal Solutions pages.

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About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

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