Patent Pending Infringement: Everything You Need to KnowPatent Law ResourcesPatent Pending
Once you submit a patent application and it is pending, you can protect your patent. If someone steals, sells, or uses your invention it is infringement. 8 min read
Updated October 29, 2020:
What Is Patent Pending Infringement?
As soon as you file a patent application with the U.S. Patent and Trademark Office (USPTO), your invention is "Patent Pending." Once your application is submitted, nobody can steal, sell, or use your invention without your permission. If this happens, they are infringing on your patent, assuming it gets issued. However, you cannot sue until your patent gets issued.
Say you invent something and want to sell it. You need to apply for a patent to prevent others from stealing your work and using it as their own. A patent is the only way to stop others from infringing on your work. The sooner you file a patent application, the better. You are protected from patent-pending infringement from the day that your application is submitted.
Inventors in the U.S. used to worry that others could steal their work during the period between filing a patent application and having the patent issued. The American Inventors Protection Act of 1999 (AIPA) granted patent-pending infringement protection. The only catch is that inventors must wait to file a lawsuit until the patent issues.
How Long Do Patents Last?
You can sue anyone infringing on your patent if it is active. Utility patents last for 20 years. Design patents last for 14 years. Note that patents can expire if the patent holder does not pay the maintenance fees. Fees are due at 3 years, 7 years, and 11 years.
What Are My Patent Rights?
- Before the patent application
You have no rights until you file a patent application. If you share your idea or product with others before filing, they can steal it without any repercussions.
- Patent-pending status
As soon as you submit a patent application, you have rights. You can place a patent-pending notice on your products. This warns others that they will be sued if they steal your idea and the patent gets issued.
- Patent approval
You have the most rights when you have a patent on file. Nobody can steal or use your idea without approval. These rights last for the duration of your patent. This is between 14 and 20 years, depending on the type of patent issued.
- After patent expires
All exclusive rights are gone once your patent expires. You can no longer sue companies for using and selling your products. The exception is if the infringement happened during the active period of your patent.
How to Get Your Invention "Patent Pending"
When someone says, "Patent Pending," what they really mean is that they have submitted a patent application to the USPTO. The invention typically stays pending for between one and three years. Then, either a patent gets issued, or the application is abandoned.
You should always have patent pending status before sharing your product or idea with anyone. However, keep in mind that it is illegal to say your product is patent-pending unless you have already filed the application.
Why File a Provisional Patent Application?
Filing a provisional patent application is the fastest way to achieve the "Patent Pending" status for your invention. A provisional patent doesn't lead to the issuance of a patent. Instead, it just says that you were the first person to come up with an idea. You have 12 months from the date you file a provisional patent application to submit either a utility patent application or a design patent application.
The USPTO is required to publish provisional patent applications 18 months after they are submitted. Up to this point, you can only see the title of the patent application when performing a patent search.
There is a balancing act between the right of the marketplace and the right of the inventor. The marketplace has the right to know about inventions and improve upon them. The inventor has the right to profit from an invention. This is why the USPTO publishes the application before a patent is issued.
A provisional patent application is useful because it:
- Grants your invention "Patent Pending" status. This deters people from trying to steal your idea.
- Gives you more time to perfect your invention. You have 12 months from the time you file a provisional patent application to file a nonprovisional patent.
- It costs less and has fewer requirements than a nonprovisional patent.
Why File a Nonprovisional Patent Application?
You don't have to file a provisional patent before filing for a utility patent or a design patent. If you have finished research and development on your product, you can move ahead and file a utility patent or a design patent. This way you don't have to spend the extra cost on a provisional patent application. Provisional patent applications have their place. But you must submit one of the nonprovisional patent applications to actually get a patent.
Suing for Patent Infringement
You cannot sue anyone for patent infringement until your product is no longer in "Patent Pending" status. However, once the patent is issued, you can sue for damages starting at the date that your patent application was submitted to the USPTO.
The USPTO is not an enforcement agency. It only reviews patent applications and approves or denies them. If you want to sue someone for infringing on your patent, you need to file a lawsuit. A patent attorney can improve your chances of winning the case.
Under U.S. law, you can receive a reasonable royalty from products that infringe on your patent application. The royalties only begin from the time your patent application is published or the time you notify the infringer. You cannot receive back royalties until the patent issues. The biggest obstacle to overcome is proving your product is "substantially identical." A patent attorney must negotiate this problem with a patent reviewer, and it's unusual to actually receive the back royalties.
What to Do If Someone Steals Your Product While It Is Patent Pending
There are some things you can do while you're waiting for your patent application to get reviewed and your patent issued. You can contact the company that is stealing your product with a cease and desist letter. In the letter, you can issue a warning that you plan to file a lawsuit when your patent issues if the company does not stop its behavior. You can also provide a copy of your patent application.
It is possible that the company using your product is not aware that it is infringing on your patent. When your patent is issued, you can decide to license your patent to the company, if you desire. However, you can also follow through with your lawsuit to stop the company from infringing on your patent anymore.
If you do not get a response from the company involved in patent-pending infringement, and the company does not stop the behavior, you should consult an attorney. An attorney can help you build a case against the company infringing on your patent and draw up plans to sue. As soon as your patent issues, you can file the lawsuit.
If you can prove a company willfully infringed on your patent, you can get triple damages. That's why it's important to write a letter and start building a case as early as you can. For most companies, the patent-pending notice on your product packaging is enough to deter theft. But it still happens sometimes.
If you're worried that another company will try to infringe on your patent, you need to make sure to include "Patent Pending" on your product, product packaging, and marketing material. Without this notice, it is hard to prove that you duly notified the infringer of your patent.
It is tempting to write, "Patent Pending," on your product before you have filed a patent application. Resist the urge because it is against the law. This false marking comes with a fine of up to $500 per offense. That can add up quickly because each offense refers to each product.
How Is Patent Infringement Determined?
Each patent lists different elements that show how an invention is unique. To sue someone for patent infringement, you must prove that one of the elements listed in your patent has been stolen. There are two types of infringement cases — Literal Infringement and the Doctrine of Equivalents.
- Literal Infringement: This is when an accused invention has all the same elements as your patent. It is essentially an exact copy.
- Doctrine of Equivalents: This is when an accused invention has some of the same elements as your patent or functions in a very similar way.
What Happens During a Patent Infringement Case?
The accused infringer can turn to a number of defenses. They can argue:
- The patent was not disclosed prior to the patent application.
- Their product does not actually infringe.
- The patent is not valid.
- The patent was wrongfully issued by the USPTO.
The case usually boils down to whether the patent holder can prove that the patent is real. It's sometimes risky to sue because the patent holder can potentially lose all exclusivity rights. Many patent holders decide to settle for a lump-sum payment or a royalty instead of going to court.
Frequently Asked Questions
- When can I file a lawsuit for patent-pending infringement?
You cannot file a lawsuit until your patent is issued. Your invention could be in the "Patent Pending" status for one to three years. During this time, you should gather information. This will help you file quickly when the patent issues. The person infringing on your patent is liable for damages from the date that you first applied for a patent and made them aware of the infringement.
- Can you license a patent-pending product?
You cannot license a product without a patent. But that doesn't mean you cannot approach companies about the possibility. Licensing is particularly useful when you find a company that is infringing on your product. Many companies would rather pay the licensing fee than getting sued. Product development and distribution cost a lot of money. It hurts more to quit manufacturing than it does to pay a royalty or license fee.
- How much money am I entitled to if I sue someone for patent infringement?
Every patent infringement case is different. Therefore, it is impossible to know how much money in damages you can receive. However, if you can prove that someone willfully infringed on your patent during the patent-pending interim, you can be awarded triple damages. Typically, you are awarded a portion of sales.
- How long does a patent infringement case take?
Complex infringement cases can take several months to resolve. You can make a case happen faster by hiring an experienced patent attorney.
Steps to File a Patent Infringement Case
- Document what the infringer is doing.
Before you can file a patent infringement case, you must describe how your product or idea is being stolen. Make sure to note the date when the infringement started. The more information you can include, the better.
- Send a cease and desist letter to the infringer.
It is important to notify the company infringing on your patent, even if your product is still in patent-pending status. You are not able to receive damages if the accused infringer does not know they are doing anything wrong. That's why most inventors include a patent-pending notice on products. It is also helpful to send a cease and desist letter.
- Wait for your patent to get issued.
It is frustrating when someone is infringing on your idea. However, you cannot legally do anything about it until your patent is issued. Luckily, you can sue for damages from the date you submit your patent application to the USPTO and notify the infringer.
- Work with an attorney to file a lawsuit.
You can file a patent-pending infringement case without the help of an attorney. However, this is not a good idea. An experienced patent attorney can ensure that you have the proof you need in order to be awarded money. They can also make sure that you are fairly compensated.
If you believe someone is infringing on your patent, you need legal counsel to sue for damages. You can post your legal need here to find a competent lawyer from UpCounsel's marketplace. Only the top five percent of lawyers with an average of 14 years of experience are accepted. You need one of the best patent attorneys on your side to help you file a case and win damages.