Patent Pending Protection: What Is It?

Patent pending protection lets you warn other people that the U.S. Patent and Trademark Office (USPTO) are considering granting you a patent on your invention. This warning will discourage other inventors from stealing or copying your invention. Once you receive a patent, you can try to get from people who copied your invention when the patent was still pending.

The moment an inventor talks about their invention in public, they have a year to take action. Here are some important things to know about the one year rule:

  • After you talk about your invention in public, you have exactly one year to file for a patent.
  • If you do not file within that year, you can no longer file for a patent in the future.
  • You can get around this rule by having people sign a "non-disclosure agreement." Everyone who signs has to keep it a secret.
  • You must have them sign this document before you them about the invention.
  • You can sue anyone who shares your secret information.

You can officially use the patent pending status after you submit an application to the USPTO. This tells other people that your patent application is in process with the USPTO. The USPTO may take three to five years or more to approve your patent application. They can also deny your application during this time.

A patent pending status doesn't let you sue someone who's copying your invention. But the status still protects you in a few ways. It warns others that you're waiting to get a patent on your idea.

The patent pending status provides protection because it discourages people from taking your invention. Once it's patented, if someone takes any part of your invention, it's considered infringement. But until then, you cannot pursue a court case against them.

Once you have your patent, you can get triple the amount of money for damages. To do this, you have to prove that someone stole your idea on purpose. You can also go back and possibly receive payments if patent violations occurred while your patent was pending. Because these penalties are retroactive, many will choose not to risk copying your invention while it is patent pending.

When to Use the Notice to Achieve Patent Pending Protection

After filing a provisional patent, you have one year to file a non-provisional patent application. Only the inventor can place the patent pending status on a product.

It's a crime to use the patent pending status when you haven't followed the rules for how to use it. Penalties include fines and jail time. You could face up to $500 in fines every time you misuse the patent or patent pending notices.

Ways to Leverage Patent Pending Protection

The patent pending status does not mean you'll get a patent. So, some competitors take the risk of copying your invention. The law (35 U.S.C. 154) gives you provisional rights that go back to the period when your application is pending with the USPTO. Under this law, you can go back after you have your patent and collect payments from people who sold your product when the patent was pending.

Using provisional rights to get royalties from those who took your invention is only possible when:

  • You have a patent.
  • You want royalties for sales that occur after your application is published.
  • The person who took your invention has a copy of your notice of application.
  • The claims about your invention must be the same in the published application and the application that's granted a patent.

The most difficult part of the process is showing that your patented invention is the same as the invention outlined in the application. Your patent attorney may negotiate with the USPTO to make the scope of the patent bigger. This can sometimes prevent you from getting the royalties from those who took your invention when the patent was still pending.

Using Patent Pending Protection

Suppose someone takes your invention, makes it, and sells it while your application is pending. You can send them a letter to tell the person that you've had a patent application published. In the letter, you can encourage them to license your invention. No one has to respond to the letter by law.

After receiving the letter, competitors may make changes to the product so that it's different from the product described in the published patent application. In other cases, the person may stop making your product or negotiate a license.

If you see someone copying your invention during the patent pending process, you can ask the USPTO to act quickly. You may also use other legal tactics to stop someone from copying your invention while the patent is pending. Claims such as copyright infringement, trade secret misuse, and others can help you stop someone who's stealing your invention.

There's one other way to leverage the patent pending protection. Build a prototype. Put "patent pending" on it. This allows you to show investors and people who might want to license your product what it is all about. You will have less concern that they'll steal your invention.

Why Is Patent Pending Protection Important?

Patent pending protection is an important step toward getting full patent protection. It's like a safeguard that kicks in after the USPTO grants a patent. If you use a crowdfunding website to find investors, you risk someone stealing your idea. But having a patent pending notice cuts the risk of publicly talking about your invention.

Even though it doesn't give you any legal protection right then, using patent pending adds credibility to your product. It's enough to make some people comfortable investing in your product. For consumer products, a patent pending status may convince shoppers the product is unique.

What Is the Difference Between Patented and Patent Pending?

Patented products have legal protection. No one can legally copy or recreate your patented invention. If they do, you can sue them.

You cannot sue someone just because your product says "patent pending" on it. But the label can be strong enough to deter people from taking your invention.

Patent pending does not guarantee you'll get a patent. The USPTO may deny your application or ask for more information.

What Is the Different Between a Provisional Patent Application and a Non-Provisional Patent Application?

There are two main differences between a provisional patent application and a non-provisional one:

  • A provisional patent offers some legal protection for an idea that you might make changes to later.
  • A non-provisional patent will protect the final product.

There are benefits to filing a provisional patent:

  • It's cheaper than a non-provisional application.
  • It gets processed faster because it has less paperwork.
  • It lets you use patent pending notice on your product.
  • It allows you to make changes to your product later.
  • You can sell provisional patent application rights.
  • You can issue certified letters about your patent pending status to anyone who is copying your invention.
  • It allows you to abandon an invention without investing in the non-provisional patent process.
  • It claims an earlier date for infringement claims if you later receive a patent.

Without any formal requirements, provisional patent applications cost less to prepare. The filing for a provisional patent application is only $130 for small entities. This includes private citizens, college and universities, and companies that employee 500 or fewer workers. If you qualify as a micro entity, the filing fee is only $65. You have to pay the fee to the USPTO when you file your application. The cost of filing a provisional patent application is hundreds of dollars cheaper than filing a non-provisional patent application.

A provisional patent application doesn't give you the right to sue someone. But it does start the clock on protecting your invention if you get a patent later. With your patent in hand, you can sue someone for infringement. You can ask for damages going back to 18 months after your provisional application's publishing date.

With a non-provisional application, examiners will actually start looking at your paperwork. By contrast, a provisional application is like a placeholder. No one at the USPTO checks your provisional application. They just give you a filing date. They then wait to see if you'll file a non-provisional application within a year.

The provisional application moves you closer to filing a non-provisional patent application. If you don't file a non-provisional application within one year of filing the provisional application, you can no longer use the patent pending label.

There are perks to filing a non-provisional patent:

  • You safeguard your intellectual property.
  • You can license your invention and make money from it.
  • You prevent others from patenting your idea.
  • You can increase your market share.
  • More people will want to invest in your product since you've officially invented something.

It takes the USPTO a long time to process non-provisional patent applications. Here is what happens when the USPTO gets a non-provisional patent application:

  • They search for other patented inventions that are similar (known as a prior art search).
  • They decide whether your idea or product can be patented.
  • They send a notification to the inventor.

If someone else try to file a patent for your invention, the USPTO will grant the patent to whoever filed their application first.

When Does Patent Pending Not Apply?

If you change your invention, the patent application may not cover updated version of your product. The invention named in the application is the only idea eligible for a patent. You can file a new application to cover the updated product.

Patents are only good in the countries where you apply for them. Likewise, the patent pending status protection varies between countries. For example, inventors in both the U.S. and the U.K. can claim royalties once they have a patent for infringements that took place during the patent pending stage. But this isn't an option everywhere. A patent attorney can help you understand your rights in different countries.

Do you have more questions about patent pending protection? You can always post your patent needs and receive free custom quoets from the top 5% of lawyers on UpCounsel. You can trust that your concerns will be addressed by legal professionals who attended schools like Harvard Law and Yale Law. UpCounsel's lawyers also have an average career length of 14 years and have often worked with major companies like Google, GE, and Twilio.