What Is the Patent Pending Process?

The patent pending process means you've filed a patent application that's now pending with the U.S. Patent and Trademark Office. The office is also called the U.S. Patent Office or the USPTO. Another term for your invention is intellectual property.

Getting funds for an invention requires talking about it. But many inventors don't want to discuss their invention because they may lose patent rights to it, or someone might steal their idea. In the U.S., you have one year to file a patent application after you first publicly discuss the invention. That's why many inventors quickly file a utility patent application. Once you file an application, your invention is in the patent pending process.

When an invention is patent pending, the USPTO has neither granted the patent to the applicant nor has it listed it as abandoned. The patent pending status begins the same day an applicant files the application. It ends the day the office grants the patent or the applicants abandons the patent.

In most cases, the patent pending process lasts one to three years. For some inventions such as electronic applications and software suites, the patent pending status may last for three to five years or even longer. The long wait period for a patent is the result of a backlog of applications with the USPTO.

An attorney can draw up a patent application for you in about two to four weeks. Most law firms require a letter of agreement from the inventor and a deposit of fees. Regardless of the type of patent application you want to submit, you may need to provide the lawyer with patent drawings. The inventor can do hand drawings or use graphic software like Inkscape or Adobe Illustrator. It's possible to hire an artist or graphic designer to do the drawings for you.

What Happens During the Patent Pending Process

Most people file their application with the USPTO electronically. When it receives your application, the USPTO searches to see if your invention is similar to patented inventions. In legal terms, the USPTO searches for "prior art." Examiners consider whether the invention is able to be patented. At the end of the process, the USTPO notifies the applicant of the decision.

There's no way to know if the USPTO will grant you a patent. But you can do an optional patent search to determine how challenging the process will be for your invention. A patent search is not mandatory before you file your application, but it can help you avoid patent fees if the search reveals serious concerns.

The USPTO only considers the invention you identify in the application. If you modify the invention's design, functionality, or any other component not listed in the patent application, then the change is not protected. You can file an additional patent application to cover the changes you make to your invention.

The process in the U.S. is more rigorous than processes in some foreign countries. In some non-U.S. jurisdictions, the issuing office grants a patent shortly after the inventor files an application. There isn't a serious investigation into whether the invention is eligible for a patent.

If someone else files a patent application for the same invention as you, the USPTO grants the patent to the person whose filing date is the earliest. This rule falls under the First to File (FTF) system. There are some exceptions to this rule, but they're rare. The FTF applies even if the first person to file didn't actually develop the invention. Best practice is to not publicly share, announce, or market your invention until you're in the patent pending process.

When You Can Use the Patent Pending Notice in Marketing

When your invention is in the patent pending process, you may place a patent pending notice on your product label, website, brochures, and other marketing materials. Even though the notice has no legal authority behind it, it's a useful tool. It alerts other people and companies that you've filed a patent application and may receive patent protection.

Use the patent pending notice when you've filed your paperwork for a provisional, design, or utility patent with the USPTO and the USPTO has accepted your application. If you've received a notice from the Office Action within the last six months, you can use a patent pending notice. You may also use the "patent pending" label when you have a notice of allowance from the office, have paid the issue fees, and the office hasn't yet sent you the patent.

Kinds of Notices to Use During the Patent Pending Process

Once you've filed an application with the U.S. Patent Office, you can use a patent pending notice that's appropriate for your product. Though the patent office has no standard format for notices, there are several common formats to consider:

  • U.S. Patent Pending
  • Patent Applied for in the U.S. and Abroad
  • Patent Applied For
  • Patents Pending
  • U.S. Patent Applied For
  • Patent Pending
  • Pat. Pend.
  • U.S. and Foreign Patents Applied For

Regardless of which notice you choose, it must accurately describe your patent pending status. Put the patent pending notice in an obvious place on the product itself and all collateral advertising the product. You can also put the patent pending serial number on the product, packaging, and marketing materials. It usually contains a slash.

By contrast, a serial number for patent-issued product does not have a slash. Though you can include the serial number for a product that's in the patent pending process, it isn't required.

When You Cannot Use Patent Pending Process in Marketing

If your product, service, or invention is not in the patent pending process, it's illegal to use a patent pending notice or label on your invention, website, social media posts, and other promotional items. The law explicitly prohibits the patent pending label if your application isn't yet filed. If you use a patent pending notice when the patent is not in process, you can face a maximum fine of $500 for each time you use the notice illegally. If you're selling a lot of products, the fines quickly accumulate.

Avoid using a patent pending notice in these instances:

  • When your lawyer is merely preparing your patent application
  • You're reviewing the application your lawyer wrote for you
  • The USPTO has granted your patent application
  • You abandon your patent application

Why Is the Patent Pending Process Important?

Patents protect your invention. The patent pending process is one step that allows you to get a patent and protect your invention. But until the U.S. Patent Office grants the patent, the applicants doesn't have any right to take action against someone who takes their invention. Once the USPTO grants a patent, you can ask a court to enforce patent rights. So, the patent pending process is important because it leads you to obtain the rights to protect your invention.

To What Extent Does the Patent Pending Process Protect Your Invention?

Whether the patent pending process protects your invention depends on how you define "protected."  When your patent is pending, it simply means you've filed an application with the USPTO. The office provides you with a serial number that indicates you're asking for a patent for your invention.

If people steal your idea or invention while your patent is pending, an action known as infringement, you have no right to sue them. But once the USPTO issues your patent, you can then file suit against a person or company that uses, makes, or sells the invention listed in the patent application.

Reasons to Consider Using the Patent Pending Process

The patent process is a significant deterrent to would-be thieves who want to take other people's inventions. Courts allow damages to begin adding up once the application is published. The USPTO publishes an application 18 months after you file the initial paperwork. From that point forward, damages pile up if someone uses or makes your invention and you later receive a patent for it.

After your invention is no longer "patent pending" and is patented, a court can hold someone liable for taking or infringing on your idea. In cases where the inventor's attorney proves a willful patent infringement, the court can triple the damages the violator owes the inventor. All these penalties are merely threats until the patent is actually issued.

Once you have a patent, you can ask the court for an injunction. An injunction stops a person or company from engaging in infringement activity.

The possibility of a lengthy court battle and the resulting damages are serious for the company that steals the invention. That's why most companies won't try to takes an invention that's in the patent pending process, especially if they feel you have a good shot at getting a patent. Because of the consequences, most companies will choose to buy your product or license it.

Reasons to Consider Not Using the Patent Pending Process

There are alternative processes to the patent pending process that are less expensive. Utility patents and patent applications run thousands of dollars. Once granted, patents provide narrow protections. They may be impractical if the inventor is actively making changes to the invention. Finally, a patent application requires inventors to invest money before they know if their invention is viable in the marketplace.

Alternatives to the Patent Pending Process: The Provisional Patent Application

Lower-cost alternatives include trademarks and provisional patent application process. Inventors can file a provisional patent application, an option Congress created. Many inventors, businesses, and universities use this tool. It costs $110 for individuals to file. Large businesses pay $220. A provisional patent application lets you use the "patent pending" notice when you show off your prototype or intellectual property.

Here are the benefits of a provisional patent:

  • It's only a placeholder.
  • You have one year to upgrade to a full utility patent application.
  • It gives you the legal right to use "patent pending" on prototypes.
  • It protects your international patent rights.
  • It buys you time to do market research.

A patent attorney or agent can provide guidance for completing the provisional patent application or can draft it for you. With a lawyer's help, you ensure the application meets the terms of 35 U.S.C. 112 by outlining all parts of your invention and its operation. Though there are fewer formalities with a provisional patent application, it still requires complete disclosure if you want to use the filing as a priority date. The components of the provisional patent application are laid out in 35 U.S.C. 111(b).

What you need to file a provisional patent application:

  • A thorough description of the invention
  • Drawings of the invention
  • A one-page cover page
  • The filing fee

For a provisional patent application, avoid words that limit the description of your invention including "essential," "must," "mandatory," and "necessary." Similarly, your description must be true and precise, but it should also be broad so that you don't overly limit what the patent would ultimately protect.

Patent drawings for a provisional application are mandatory according to 35 U.S.C. 113. The only exception may be chemical compounds or formulations. You must have drawings in black ink and ensure they comply with USPTO standards for line thickness, margins, bullets, numbering, and so forth. There is a section of law, MPEP 601.01(f) that claims a patent application for a method does not require a drawing in order to receive a filing date. Still, many lawyers advise to provide drawings of methods you want to patent.

It's important to do your application correctly. Competitors can use improper provisional patent applications against inventors to show there wasn't really a fully developed invention at the time of filing. Be wary of those offer provisional patent application classes online or templates for doing the paperwork. Some courses and guides are not put together by credible instructors. Your best bet is to use a patent attorney or agent.

It seems the USPTO does not review provisional patent applications, resulting in varied quality of applications. There seem to be no immediate consequences from the patent office for a deficient provisional application. But you can run into serious problems if you want to convert your application to a utility patent application. When you try to claim the priority filing date using your provisional application, you will run into major problems with an examiner if your application is incomplete.

Because the provisional patent application takes the place of building the product you've invented, you don't need to submit an abstract nor a patent application declaration. The declaration certifies that you're the inventor and reveals any known past inventions that are similar to yours.

How to File a Patent Application

Take a look at this overview of what you need to do before sending in your patent application. You don't need a lawyer because you won't have to deal with a judge or court. There's no requirement that you do legal research. Here's a step-by-step guide to ensure you follow USPTO rules for filing a patent.

  1. Document your invention: Write down all the steps you take to invent your product. You need to describe and draw out all parts of the invention proces. This includes any changes you make to the product along the way. Be sure to take note of how you got the idea for your invention. In some cases, you may want to build a model, known as a prototype. Keep track of any models you build. Take notes on the process. As you write down each step you take, sign each entry, and date it. Ideally, two other people should sign as witnesses
  2. Find out if your invention is elligble for protection: It's not possible to patent an idea. In your application, you have to explain how your product works and prove that it's new. A new invention is different from any other product that anyone else has invented. It also can't be on sale or widely known to the public before you submit a patent application.
  3. Decide if your invention will sell: Inventors apply for a patent because they believe the investment in the process will pay off in the future. Even if you do the entire application yourself, the patent filing fees will run about $1,500. Don't waste time and money applying for a patent until you figure out if the market will want to buy your invention.
  4. Search past inventions: To avoid infringing on someone else's invention, search past inventions in the same field as your product. Search patents in the U.S. and possibly other countries. Scour scientific publications and journals for similar inventions. While this process takes time, you can quickly do it. As the inventor, you're the right person to start the search. You can always hire a lawyer later. Begin by searching on the web. Go to a Patent and Trademark Depository Library. A librarian can help you search older patents. As you do research, you'll find inventions that are like your product. It's important to show how your invention varies from these part inventions or builds on them
  5. Fill out the application and send it to the USPTO: It's time to file with the USPTO. Fill out either the regular patent application (RPA) or the provisional patent application (PPA).

Alternatives to the Patent Pending Process: The Trademark

Often underutilized, the trademark registration gives some legal protection to inventors. To apply for a trademark, you use state and federal trademark processes. The trademark applies to your invention's name. Every product needs a name that's catchy and able to be registered for a trademark. Once an inventor uses a product name with customers, investors, and potential licensees, the name becomes strongly connected to the invention. So, once you pick a name, trademark it.

With regular usage of a trademarked name, you build a brand for your product. The name and brand become an asset. They create distance between you, competitors, and counterfeiters. To qualify for a trademark in some states, you need to demonstrate regular usage of the trademark publicly. For federal trademark protection, you must use the trademark in interstate commercial deals.

Once you choose and begin using your trademark, use the TM or circle-R symbols, depending on which one is appropriate for your product's name. Ask an attorney for help complying with state laws governing the use of TM. Most states allow you to claim trademark rights for free. All you do is put the TM by your product's name. A word processing program on your computer can create the TM symbol if you type the two letters inside parenthesis.

After you register your product's name with the federal registry, you can use the circle-R notation. To create this symbol, type the letter R between two parenthesis.

Length of a Patent

Patents last 20 years from the date you file an application for a utility or plant patent. For design patents, the patent lasts for 14 years from the date the USPTO grants the patent. Because of the limited timeframe of patents, it's ideal to file for a patent as quickly as possible to protect your invention. The provisional patent application date does not count toward the alloted length of your patent. The countdown begins when you file the nonprovisional patent.

A patent, provisional patent application, the patent pending process, and trademark are tools. They protect your intellectual property. It's important to use the right tools for your invention.

If you need help with understanding the patent pending process, you can post your patent needs or any other business legal need and receive free custom quotes from the top 5% of lawyers. UpCounsel works with experienced lawyers that have worked with large companies such as Google, GE and Twilio.