Difference between Patent and Patent Pending: Everything You Need to KnowPatent Law ResourcesPatent Pending
The biggest difference between patent pending status and holding a patent is patent pending simply means you have applied for, but have not received, a patent. 14 min read
What Does "Patent Pending" Mean?
The most important difference between a patent pending status and holding a patent is that patent pending denotes that a patent application has been filed. "Patent pending" simply means that you have applied for, but have not yet been granted, a patent. Holding patent pending status is important because it allows you to begin marketing your product on the commercial market while you pursue patent status.
It also provides some control over the use of your product while warning others against attempting to file patents for substantially similar products. In order to use the patent pending notification is to apply for a provisional patent.
It's important to note that the words "patent pending" carry no formal legal significance. The term just communicates that you are pursuing a patent and have filed a provisional patent or a patent application. It is this provisional patent or application that protects you for a brief period of time, with protections similar to a regular patent.
What Is a Patent?
A patent is one type of legal protection over a piece of intellectual property (IP). There are, in general, three different forms of IP protection. Two are automatic, and the third requires filing official paperwork.
Copyright and Trademark are automatic legal protections. The moment you create a work of art, document, music, or other work of authorship (published or not), it is protected by copyright. You may place a © symbol after the work's title, and it is protected from any unauthorized use.
A trademark, on the other hand, protects a word, phrase, symbol or trade dress associated with your business. The moment you name your business and use it in commercial practice, or develop trade dress, a brand or the like, you can mark it as ™ or, if you register it, an ®.
A patent , on the other hand, requires you to file for legal protection. It covers an invention, process, or other physical creation. Everything from a new plant species produced by a breeder to the rules of a game to a new kind of machine can be protected by patent.
How Long Does Patent Protection Last?
Protection under a provisional patent lasts for one year, during which time you must file a full patent application. Full patent applications last for 20 years for utility and plant patents (25 years if the plant patent is for a vine or tree), and 14 years for design patents. Patent protection cannot be renewed, but in situations of delays based on regulatory delays (such as FDA approvals taking decades), the term can be extended.
Registering Intellectual Property
By registering your IP, you gain legal standing should you have to sue someone else for infringing upon your property. While all works of authorship are protected by copyright, and all brands by trademark, should someone violate your ownership, you'll need to prove that you were the first to create the brand or work, unless you have a registered copyright or trademark.
Patent protection, unlike the former two, is not automatic, and registration is not optional. You must register your patent to protect your new invention. However, from the moment you apply for a patent, you can gain some level of benefit in the form of "patent pending" status.
What Specific Protections Exist?
The protections you gain from "patent pending" status can be confusing. The term itself has no specific legal effect and serves only to put competitors on notice that you've applied for a patent. However, under the American Inventors Protection Act, you do gain provisional rights and protections, including the right to secure royalties from those who use your invention after it has been published but before a full patent is granted.
These rights, which come into effect following the publishing of an application, are called "provisional rights." In order to collect royalties based on provisional rights, you must meet the following requirements:
- You have given notice in the form of a cease-and-desist letter to the third party.
- You actually receive a patent for your work.
In addition, after you receive a full patent, a competitor may attempt to make changes to your invention and escape your patent protection. In general, attempting to do this requires a fairly broad, unique, unexpected, and non-obvious change. Competitors cannot make a minor tweak to your invention and claim it as their own.
Types of Patents
There a number of basic types of patent in the United States. These include the utility patent, the design patent, the plant patent and the provisional patent. Which one you need depends on the nature of your invention.
- Utility Patents are the kind of patent usually referred to when someone thinks of a patent. These cover all inventions and processes that are unique (novel), non-obvious, and useful. They last for 20 years from the date of filing.
- Design Patents are currently very popular among technology companies. These cover things like graphical user interfaces, icons on computer screens, smartphone and tablet designs, and any other characteristics that are ornamental in nature. A standard utility patent protects an item's processes or function, and a design patent protects its looks and form.
- Plant Patents protect new varieties of plants that were developed in cultivation and reproduced asexually. They can protect the plant's form, processes, traits, cultures, seeds, and more.
- Provisional Patents are a budget-friendly way to get an invention on the books immediately, if on a temporary basis. A provisional patent will not become a permanent patent — it only secures a filing date with the U.S. Patent and Trademark Office (USPTO). It is less expensive to put together and allows you to claim patent pending status. After filing a provisional patent, you have one year to file a formal application.
Basics of a Utility Patent
When someone says 'patent', they are usually referring to a utility patent. Utility patents are the most useful legal tool for protection inventions. These patents can cover new, unique methods processes, machines, and other items. Certain items like natural laws and abstract ideas can't be patented. Utility patents last 20 years from the point of filing.
A utility patent is useful because it prevents other people from using your invention. It also gives you the ability to license or sell your invention.
To apply for a utility patent, you will need to fully outline your invention to the USPTO. This can include drawings of your invention, how it is used, and what legal claims you are making.
After submitting, you will have to wait for an examiner to review your application. Since this can take as long as two years, you should consider paying a small fee through the Track One program to speed up your application.
If your claim is denied, you can make amendments and then resubmit. Once your application is granted, you will have to pay an issue fee. Expect to pay $10,000 or more while applying for a utility patent.
Design patents are less expensive—less than $2,000—and last 14 years. If you've filed your design patent after May 13, 2015, your patent will last 15 years. This was the date paperwork was filed to ratify the Hague Agreement. Design patents do not require maintenance fees.
What Cannot Be Protected?
There are a number of things that are not eligible for patent protection, including abstract ideas, mathematical formulas and algorithms, theoretical concepts with no bearing on the real world, works of authorship (see copyright, above), laws of physics or scientific principles, people, natural phenomena, or inventions whose only uses are in the production of atomic weapons.
The Myth of the Postmark Patent
Far too many people believe that they can protect an invention by mailing it to themselves or mailing a description of it to themselves and leaving the package unopened. All this does is document the date you had the idea. It also carries no weight in court.
In the United States, you must actually file a patent application before anyone else in order to receive patent protection.
What If I Claim Patent Pending but Have Not Applied?
Claiming "Patent Pending" status if you have not actually filed a provisional patent is illegal and can get you into trouble. Should someone challenge your status, and you haven't filed an application, you can be subject to fines ranging up to $500 per article mismarked as pending, if it's found that you did so in an effort to deceive.
When Can I Claim Patent Pending Status?
If you have filed a provisional patent or have a patent application on file, you can claim patent pending status. This means if you meet the following requirements, you can place the term "Patent pending" on your invention:
- You have filed a provisional patent, design patent, or utility patent application with the U.S. Patent Office, but you have not yet been granted the patent.
- You have received an Office Action from the U.S. Patent Office within the past six months.
- You have been given a Notice of Allowance from the Patent Office and have paid the issue fee, but you haven't yet received the actual patent.
The following situations do not allow you to claim "patent pending":
- You have hired a patent attorney and begun drafting the application but have not yet filed it.
- Your attorney has sent you an unfiled draft to review.
- You have received a full patent from the U.S. Patent Office.
- You have abandoned your patent.
The Length of Patent Pending Status
Most applicants want to know how long their 'patent pending' status will last. Typically, the patent pending label between 1 and 3 years. Certain applications, such as those for electronics, can last between 3 and 5 years, sometimes longer. Patent pending status lasts until your patent is approved or abandoned.
Are There Formal Notices to Use?
There is no specific legal formal format required for a patent pending notice. So long as the term you use is accurate, truthful, and conspicuous, it should suffice. A few examples of common notices include:
- Patent Pending
- U.S. Patent Pending
- Patent Applied For
- Pat. Pend.
- U.S. Pat. Pend.
- Patent Applied For in the U.S. and Abroad
- U.S. and Foreign Patents Applied For
Is My Invention Patentable?
Determining if your invention is eligible for patent protection requires a lot of research and knowledge. First, you will want to do a search for Prior Art that is similar to your invention -- anything that is related to your invention will need to be included in your application, with a description as to how your invention is different.
Searching for Prior Art can be done through the USPTO, Google Patents, professional databases that are accessible through pay services or many libraries or through a professional service such as a patent law attorney. If you are not adept at keyword searching, the terminology of patent language, or the like, hiring a professional may be your best bet.
You will likely also want to request the full patents of any Prior Art you find, so you can review the language, function and drawings included. You'll need this information to compare it to your own.
Should I File a Provisional Patent?
Whether you should file a provisional patent and, by extension, gain patent pending status, depends on your budget, needs and most importantly, how close you are to completing your invention.
If you can complete your invention and file for a full patent within twelve months, provisional patent status can be very useful. Patent Pending status can help you to earn income which you can use to file for your full patent within the next year and allows you to take the steps needed to gain a full patent.
In addition, as of March 16, 2013, the United States adopted a system called "first to file." This system means that the first person to file a patent application gets the patent, as opposed to who actually first completed the invention. Filing a provisional patent application can help you beat competitors to the punch. It's also an economical way to get started. The costs are as follows:
- Micro-Entity: $65
- Small Entity: $130
- Large Company: $260
Can I Lose Patent Pending Status?
Provisional patents and patent pending status are designed as temporary protection. This means that you can lose the status they grant. Loss of provisional patents occurs if you fail to file for a regular patent within one year. It can also happen if you make mistakes in your initial filing, which makes it useful to have the services of an intellectual property attorney even for this basic filing.
Failing to properly complete your provisional patent can, in fact, become a weapon that competitors can use against you to challenge your ownership of your invention.
Proper Provisional Patents
When filing your provisional patent, be absolutely sure to include the following elements:
- Drawings: contrary to popular belief, the 35 United States Code, section 111 clarifies that drawings are necessary. While there are fewer formalities, if drawings are required to understand how the invention works or what it is, they must be included. It's a strong rule of thumb to always include drawings.
- Invention Description: Make sure that you include as detailed a description as possible in your application. While provisional patents are less stringent than full applications, it wouldn't hurt to study a successful patent and model your description after it. If nothing else, it will get you closer to your full application.
The more detail and information you provide in your provisional application, the better off you'll be if you need to defend your idea, and the closer you'll be to completing your full patent filing.
Patent Applications and Publishing
As of 1999 and the American Inventor's Protection Act, every patent application is published, at which point the clock begins ticking to gain your patent. Publication usually happens 18 months after the earliest filing date on the USPTO website, and includes the application as filed, without amendments. Publication is automatic and costs nothing.
You can request that your application plus amendments are filed with a small entity fee of $70. You can also request early publication, with no fee.
You can request that your application not be published at the time you file, but it must not have been filed in any foreign country that publishes through the Patent Cooperation Treaty (PCT), and you must have no intention of filing in such a country. However, publication provides you the "reasonable royalty" protection of patent pending status.
Patents and Secrecy
Patents and secrecy do not go together. If you wish to keep your invention secret, you can rely on the protections provided by trade secrets. These provide intellectual property rights to those secrets that give your business a direct competitive advantage.
The negatives of trade secrets are:
- Once your secret is publicly revealed, it is no longer protected as a trade secret.
- Many manufacturers are unwilling to sign non-disclosure agreements on products they have not seen.
- A competitor could reverse-engineer your process or invention, create a substantially similar one, and patent it, which then could leave you vulnerable to lawsuits to cease your process or production.
Business Practices and Patents
Before the deciding of the State Street Bank case in 1998, business practices were not considered to be patentable. Following that case, the courts ruled that a business could patent their practices; this protection was extended even further with a case in 2005, which even allowed for methods of paying managers to be patentable.
However, because of a deluge of patent applications for business practices that followed these cases, the courts are now scaling such protections back. The courts (including the Supreme Court of the United States in 2010) have now ruled that to be patentable, there must be a specific machine or transformation involved in the process. The exact meaning of this is still unclear, and it's likely more court cases are going to follow.
Challenges to an Application
You cannot both apply for a patent and keep your invention secret. Your patent application ceases to be confidential the moment it is published by the Patent Office.
This means that anyone can use the Patent Application Information Retrieval System (PAIR) to request access to the full application and its history. Competitors can attempt to challenge your patent based on prior art in one of three ways:
- Third-party submissions can be filed within two months of publication.
- Protests can be filed by any member of the public, but must be filed before publication or notice of allowance is issued.
- Citation of Prior Art from patents already issued can be filed by anyone, and they can submit publications or other patents with an explanation of how it affects the current patent application.
Just because you receive a patent, that doesn't necessarily mean you can immediately start selling your invention. It's possible that someone else may have a dominating patent, which can be used to stop you from producing and selling your invention. This is another area where having a patent law attorney can come in handy.
The 12-Month Rule
One year is a sort of magic number for patents. If your invention has been published or made available for public sale or use, you have up to 12 months to file for a patent. Filing for a provisional patent counts as publishing your patent for these purposes. If you fail to file for a patent within a year, you may not get a patent to protect your invention.
U.S. vs. Foreign Patents
Receiving a patent in the United States only gives you control over the patent in the United States. That means you can stop your invention from being manufactured or sold in the United States, but if someone wants to make and sell it, for example, in Europe, they still could.
There are no international patent protections, though some regions such as the European Union, the former Soviet Union, and some African nations have regional patent protection. You can file an international application at the USPTO under the Patent Cooperation Treaty, which if approved will provide protection up to 30 months, but you will need to file in each country in which you want protection, under that country's rules, laws, and procedures.
Applying for a Patent
Applying for a patent requires following a set procedure that includes the following steps:
- You reveal your invention to your attorney via an invention disclosure form. This disclosure form is just for your attorney. It cannot be filed in the Patent Office. While originally, starting in 1969, the Patent Office allowed such filing, the Disclosure Document Program was eliminated in 2007.
- Your attorney (or you) conducts a search for Prior Art relevant to your invention.
- You prepare (with the help of your attorney) either a provisional patent or full patent application, which you submit with an application fee.
- After submitting this application, you may mark your product as "patent pending" and begin marketing it.
- A Patent Office Examiner reviews your application.
- You receive an "Office Action" either accepting or rejecting the application.
- If necessary, you modify and resubmit the application.
- The process continues until you abandon the effort or your application is accepted, at which point you pay an issue fee and receive your patent.
When describing your invention in your application, be sure you include any and all variations and alternatives. Even if they don't work properly, if you fail to mention these options, others could create imitation products which don't work quite as well, and make a lot of money undercutting you on the cost.
Patents for Non-Citizens
If you are not a U.S. citizen, you can still receive a U.S. patent if your country would allow a U.S. citizen to receive a patent. In general, for this to happen, you must first file in your home country, or at a minimum, apply for permission to file elsewhere. It's rare for such permission to be refused.
Should you file in your home country first, and within one year (or six months for design patents) you file in the U.S., your original home country filing date will be treated as your filing date in the U.S., provided that your home country has a treaty with the U.S., is a member of convention nations, or you file an application through the PCT, which gives you up to 30 months following your priority date to file.
Generally speaking, if you file a PCT application, it will need to be in your home country or a country where you are a citizen, according to its rules, and that country must be a PCT member.
Patent Filing Costs
It's not cheap to get a full patent. At the minimum, it will likely cost you at least $7,500 from the start of your search to the awarding of the patent, including filing, award fees, search and services fees, and legal fees. It can sometimes cost quite a bit more.
Hiring a Patent Attorney
Patent law is very complex, with a lot of strict deadlines and qualifications. Due to the complexities of everything from searching for Prior Art to meeting deadlines, understanding the differences between types of patents, and the strict requirements for creating a patent application, it is always a good idea to hire a strong patent law attorney for help.
If you need help with completing a patent application, you can post your legal need and instantly receive free custom quotes from the top 5% of lawyers with an average of 14 years of experience. UpCounsel makes it easy for you to find a reasonably priced attorney with the skills and experience to meet the unique needs of your business.