How Long Does Patent Pending Last: Everything to KnowPatent Law ResourcesPatent Pending
How long does a patent pending last? This phase of the patent process can last from one to three years, or longer depending on the complexity of your invention.8 min read
2. Patent Pending for Provisional vs. Non-Provisional Applications
3. Protections for Patent Pending Inventions
4. Track One Examination
5. Using the Patent Pending Designation
6. When Patent Pending Should Not Be Used
7. How Long Does It Take to Get a Patent?
8. What Is Limited Patent Life?
9. Can Patent Pending Last Too Long?
How long does a patent pending last? This phase of the patent process can last from one to three years, or longer depending on the complexity of your invention. Software or electronics applications are often patent pending for five years or more. This period starts when you submit either a provisional or non-provisional patent application to the U.S. Patent and Trademark Office (USPTO). It ends when they grant or deny you a patent. The application backlog at the USPTO and the complexity of your application also affect how long your patent is pending.
How to Get a Patent Pending
The cheapest way to get a patent pending is to file a provisional patent application (PPA). Congress set up this option to help inventors. The cost of a PPA ranges from $65 for micro-entities, to $139 for small entities, and up to $260 for large entities. The PPA does not put your application in front of an examiner. It's a placeholder that gives you one year to file a regular patent application.
To get a patent pending, complete and file an application. The packet should include:
- A cover sheet
- A detailed description of how to build and use your product
- Drawings of your invention
- The required fees
Filing a PPA does not require a list of patent claims, all similar patented inventions, nor a statement that you invented the product.
You can submit your PPA and the supporting materials in person, by U.S. Priority Express Mail, or online at the EFS-Web, the USPTO's online filing portal. If you mail your application, wait to receive confirmation that they got it before using the patent pending label. With the electronic system, you get immediate confirmation that the USPTO has received your application. That means you can use a patent pending status immediately. Once you submit the application, the USPTO will send you a patent pending serial number. This number tells other people you've applied for a patent.
Using a PPA allows you to grab an early filing date even if you aren't quite ready to turn in a regular application. You must turn in the non-provisional application within a year of filing your PPA to hold on to its filing date for your patent application. If someone else files for the same invention, the USPTO will award the patent to the person with the earliest filing date. The USPTO will toss a PPA when you don't file a regular application within one year.
During the year between filing the PPA and filing a regular patent application, you can test your product in the market. Make sure it's going to do well before spending the money on a utility or plant patent application.
Patent Pending for Provisional vs. Non-Provisional Applications
The time period from application to patent receipt depends on whether you file a provisional or non-provisional application. Non-provisional applications are placed in a queue and examined in order of receipt once all documentation has been submitted. The average wait time is about 21 months until examination and about 32 months until the application is approved or denied.
Inventions in certain technical areas may have a shorter wait time. This depends on how many examiners are available in that particular specialty, known as an art unit. Each art unit has a separate queue with a separate wait time.
Provisional patent applications, on the other hand, are not placed in a queue. Instead, you'll have a year from the filing date to submit a complete non-provisional application. Once you do so, your application will be queued for examiner review.
Protections for Patent Pending Inventions
During the patent pending phase, inventors have no legal rights. They can't sue someone who steals their idea. But once they have a patent, inventors can sue someone in federal court for taking their idea. The court can award damages going back through part of the patent pending time period. Damages begin building up from the date the USPTO publishes the application. Often, these penalties strongly discourage another company or person from taking your work. Patent attorneys say you should only talk about your work after it has a patent pending.
Many investors, licensees, and potential buyers appreciate the credibility that comes with a patent pending designation. It can help you secure financing and market your product. When you have a patent pending, you don't have to ask investors or manufacturers to sign a non-disclosure agreement (NDA).
Track One Examination
Prioritized examination, called Track One, is offered by the USPTO for a limited number of applications each year for an additional fee. This substantial cost allows you to receive a final approval or rejection within 12 months.
Using the Patent Pending Designation
Once your patent is pending, you can put a notice on your product and any collateral you use to promote it. It's legal to use patent pending in these cases:
- You've filed a provisional, design, or utility patent with the USPTO.
- You've received an Office Action from the USPTO within the last six months.
- You've received a Notice of Allowance from the USPTO, and you've paid the fee, but the office hasn't given you a patent yet.
No set standards exist about how to mark your product with a patent pending status. You can use any of these or similar terms:
- U.S. and Foreign Patents Applied For
- U.S. Patent Applied For
- Pat. Pend.
- U.S. Patent Pending
- Patent Pending
- Patents Pending
- Patent Applied for in the U.S. and Abroad
- Patent Applied For
- U.S. Pat. Pend.
The notice you use must be accurate. Don't use U.S. abroad if you've only applied in the U.S. Place the notice in a visible spot on your product, website, and other materials.
When Patent Pending Should Not Be Used
It's illegal to use the patent pending label on your product or promotional assets if you haven't applied for a patent or you've already received your patent. The label only applies when you're waiting for the USPTO to approve or deny your application. The fine is $500 for each time you falsely using the patent pending designation.
When to avoid using patent pending in marketing:
- You've hired an attorney to do your application.
- You have an application draft from your lawyer to edit.
- You receive a patent.
- You abandon your patent application.
A patent pending notice continues until your patent is no longer pending with the USPTO. After the USPTO gives a patent or the inventor abandons the application, the inventor can no longer use the patent pending notice without breaking the law. Once inventors receive a patent, they replace "patent pending" with the patent number. It can look like this: Pat. No. #######.
How Long Does It Take to Get a Patent?
From beginning to end, the patent process is lengthy. Here are the typical steps:
- Search for patented works, known as prior art, that are similar to yours. An attorney usually completes this task in one to three weeks.
- Draft the patent application. Many lawyers can give you a draft in two to four weeks. The lawyer's caseload, the complexity of the invention, and the information provided by the client influence how long it takes to write a draft.
- After the application is filed, the inventor can use the patent pending status. This is a good time to begin marketing or licensing your invention.
- The wait depends on whether you file a provisional patent application (PPA) or non-provisional application.
- With a PPA, the patent examiners do not review your material. They merely assign your application a filing date. Having an early date is good if someone else tries to patent your invention. You have to file a non-provisional patent application within one year of filing a PPA or you lose your early filing date.
- The wait for a non-provisional application ranges from one year to more than five years.
- Some technical areas have a longer wait due to a backlog.
- You can pay a fee to get a prioritized examination. The USPTO offers these on a limited basis. The review happens within one year of an application getting put on the fast track.
- Receive a determination (a patent or denial) from the USPTO.
Filing an application in the U.S. does not always result in a patent. An invention must pass the prior art search and be deemed patentable. There are a few countries that give a patent to anyone who files an application without examining the application.
If you get a patent, it will last for 20 years from the date you submitted your full application. The filing date of a PPA does not count toward the 20 years.
Many patents are pending for several years. The processing time is lengthy because the USPTO has a big backlog of applications. With a utility patent application, expect to wait two to five years for the USPTO to grant a patent. Expect a shorter wait for design patents. The USPTO processes them in one to two years.
Whatever invention is described in your patent application is the one for which you receive patent protection. If you change your invention after applying, the new version of your product will not be included in the patent. This is an important consideration for anyone who continues tweaking their product after applying for a patent.
What Is Limited Patent Life?
The longer your patent is pending, the shorter the life of your patent. That's because you have no legal rights to enforce a patent that is pending, but the 20-year limit for patent protection starts with your initial application filing date.
However, if an undue delay is caused by the patent office, this time period can be added to the total patent protection period through a process called patent term extension.
If your invention is infringed upon while your patent is pending, you cannot sue that person for infringement. For this reason, you should not disclose your invention while your patent is pending. However, if someone tries to patent a similar invention while your patent is pending, the USPTO will grant the patent to the patentable invention with the earliest filing date.
Can Patent Pending Last Too Long?
Some people fear the patent pending status is ripe for abuse. The question came up in a court case that came before the Court of Appeals for the Federal Circuit, which is the U.S.'s leading patent court. The court ruled that someone can challenge a patent if they believe the applicant for trying to prolong the patent pending phase.
The case centered on patents held by Jerome H. Lemelson. He holds the recorder for having the most U.S. patents. His patents start in the early 1960s and continue past his death in 1997. He holds patents for barcodes and machine vision. According to his estate, 185 unexpired Lemelson patents exist as well as many pending patents. Lemelson's estate has gotten more than $1 billion in royalties from licensing his patents.
The companies involved in lawsuits say Lemelson and his lawyers kept the patents pending for so long that they hindered technological advancements in the field. The legal term for the defense is "laches." It means someone has delayed a lawsuit for no legitimate reason and has caused the other party to lose money as a result of the delay. The Lemelson case is the first time the laches concept has been applied in a patent pending case. The companies claimed that Lemelson and his attorneys kept asking for continuations or refiled applications multiple times.
Continuations are a normal part of the process. They give patent office examiners time to review the application. They can also allow the applicant to submit new claims. With repeated continuations, the patent pending process drags. In the Lemelson case, a patent application from 1953 was pending until 1963 because of refiling actions. In 1996, a magistrate concluded that Lemelson would take note of new inventions and then draft claims to include these inventions in his original application. Lemelson said this is what he did, but said it was a way to outsmart the competition.
Even though the magistrate's opinion went against Lemelson, the lower courts disregarded it. They said the laches concept doesn't apply with multiple patent refilings. It's rare that applicants use the Lemelson trick these days. Patents last for 20 years. The clock starts ticking from the filing date of the regular patent application, so any applicant-initiated delays count toward the total life of the patent.
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