People often encounter products that are marked with the phrase “patent pending,” but what does that really mean? “Patent pending” can be somewhat misleading to those unfamiliar with the lengthy process involved with obtaining a patent in the United States. In short, patent pending means that a patent application has been filed with the United States Patent and Trademark Office (USPTO) but has not yet been issued as a patent.
Patent Application Process
After coming up with a new idea or invention, an inventor can file a patent application. Once filed, a patent application enters the unexamined patent application inventory at the USPTO, which can include more than 500,000 applications at any one time. When the patent application is finally up for examination, one of the USPTO’s more than 8,000 examiners searches the prior art to determine if the claims of the application are allowable. Based on the examiner’s search and analysis, the examiner may issue a response, indicating whether or not the application is allowable. This first response will, on average, arrive 16 months after the date of filing the application. If rejected, the applicant can respond to the examiner to explain why a patent should be allowed, and may even amend and clarify the original, as-filed claims. The process of rejection and amendment may repeat until the examiner is convinced that a patent should be allowed, after which, the applicant pays the appropriate fees and the patent issues. As of 2020, the process to obtain a utility patent in the U.S. takes 2.5 years on average. The procedure is similar for design patents, albeit with fewer applications filed and somewhat shorter durations in pendency. During this process that may last several years, inventors are permitted to mark their products with “patent pending.”
It is fairly easy to obtain “patent pending” status, since no substantive examination of an application is necessary. However, one must remember that an issued patent is only as useful as the content and details that are contained in the original application, since new matter may not be added during prosecution.
Why use the phrase “patent pending”?
The term “patent pending” on a product does not mean that the individual or company will eventually receive a patent. Instead, it simply means that a patent application has been submitted to the patent office. The phrase does not offer any protection in the form of actionable patent rights, and the right to stop others from practicing an invention comes only with ownership of a granted patent.
So why do inventors mark their products with the term “patent pending”? One reason might be to reinforce the validity of the invention. Consumers might see a patent pending mark and perceive the product to be innovative and of a certain quality. Another reason may be to deter would-be competitors. Competing companies are less likely to enter into a market for a specific product if they believe the product is already patented. However, as discussed above, a pending patent application does not offer any concrete protection until a patent has issued. Therefore, it is still possible that certain competitors may see that a patent is pending and ignore the warning with the understanding that the scope of the claims in a granted patent may be different than the claims of a published application.
Upon filing a patent application, applicants receive an application serial number that can be used on marketing materials, advertising campaigns, packaging, and the product itself. While not necessary or always advised, marking products with this number can be useful in giving the invention credibility to consumers and to potential licensees.
Filing sooner is better
The United States Patent Act prescribes a first-to-file patent system, which means the first person to file a patent application gets priority, even if someone else had previously conceived of the idea. Thus, it is important to file a patent application as soon as possible, especially if the idea has already been publicly disclosed. U.S. patent law provides inventors with a one-year grace period between publicly disclosing their idea and applying for a patent. If possible, an applicant should file a patent application before sharing an invention publicly to properly secure possible patent rights. If public disclosure is imminent, a provisional patent application may be filed to preserve a filing date.
Only those who have submitted a patent application, provisional or non-provisional, may mark their products and/or packaging with “patent pending.” If a patent application has not been filed or the patent application referred to does not cover the marked subject matter, an offender that falsely marks an item can receive a fine of up to $500 for each offense, i.e., each falsely marked item may result in a fine. Consequently, the fine can grow to substantial portions depending on the number of items that are improperly marked.
TraskBritt patent attorneys can help
As described above, the patent process can be complex and confusing, but it does not need to be overwhelming. The patent attorneys at TraskBritt are experts in navigating the world of patent law and dealing with the USPTO. They work hard to draft and secure patents for their clients, large and small. Skilled practitioners, such as those at TraskBritt, can help you describe your invention fully, thus when your patent issues, you can feel confident that your intellectual property is properly protected.
Article written by K. Russell Griggs