When Can You Say Patent Pending? Everything You Need to KnowPatent Law ResourcesPatent Pending
Once you submit a patent application to the USPTO, you are "patent pending." You are allowed to describe your invention as pending until you receive approval. 9 min read
Updated July 7, 2020:
What Is a "Patent Pending" Notice?
A patent pending notice is a phrase that is written on your product, website, and marketing material. It lets people know that you've applied for a patent with the USPTO. You see these notices on everything from kitchen appliances and electronics to clothing and shoes. Once you submit a patent application to the U.S. Patent and Trademark Office (USPTO), your invention is "patent pending." You are then allowed to describe your invention to others that way until your official patent is granted. This can take several years.
A patent pending notice is not legally required on product packaging, but most attorneys suggest that you use it. This is because you can't sue someone for violating your patent unless your product specifically lists information about your patent.
Format for Patent Pending Notice
There is no required format for stating the patent pending notice. Below are some common examples of how it appears on product packaging and material:
- U.S Patent Pending
- Pat. Pend.
- Patent Applied For
- Patent Applied for in the U.S. and Abroad
You should place your patent pending notice in a place that will stand out. It should be visible on the product, product packaging, your website, and any marketing material. You can then convert this phrasing to your patent number once it is issued.
Why Is a Patent Pending Notice Important?
The patent pending notice does not confer any legal protection. However, it does warn competitors that they may be get in trouble for infringing upon your intellectual property if the patent gets issued, and they've tried to copy or steal your product or idea.
Applying for a patent is a necessary cost of launching a product. As an inventor, it's important to apply for a patent for all new products and ideas. The sooner you do this, the better off you are.
A patent attorney can help you file both provisional and nonprovisional patent applications. You can file a provisional patent application on your own through the USPTO website. However, it's better to get the help of an attorney to make sure you're protected.
Suing for Patent Infringement
If someone uses your invention without permission, you can sue for patent infringement. However, you must wait to file the claim until your patent is officially granted and no longer in "Patent Pending" status.
Patent infringement damages start to accrue 18 months after the patent application is filed. On top of that, if you can prove the infringement was willful during the patent pending time frame, you can receive triple damages. It is also possible to get an injunction, which is an official warning from the court, against the company to stop all product sales.
When Do You Use a Patent Pending Notice?
You can only use the patent pending notice after your patent application is complete. This includes paying the application fee. It is not a term you can use freely. There is a penalty for saying "patent pending," if the application has not been submitted yet.
If you state, "patent pending" before you have applied for a patent, you are committing fraud on the Patent Office. This comes with fines of up to $500 per case. That fine can add up quickly when dealing with high-volume goods.
This information is found in 35 U.S. Code 292(a) about false marking. The document states:
"Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words 'patent applied for,' 'patent pending,' or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public — Shall be fined not more than $500 for every such offense. Only the United States may sue for the penalty authorized by this subsection."
What Happens While Your Product Is Patent Pending?
It takes a long time for patent approval in the U.S. because the USPTO has a large backlog of cases. That's why it's common to see the "patent pending" term on product packaging at a store.
The USPTO does not publish your patent application for at least 18 months. During that time, your application information is kept confidential. This deters people from stealing any aspect of your invention. People don't know the exact stipulations of your patent and don't want to take a risk.
Many people worry that it's not safe to tell others about their ideas until an actual patent is granted. Luckily, the "Patent Pending" status carries considerable weight. It's usually enough to prevent others from stealing your inventions and marketing them as their own. Instead, many companies would rather buy or license the patent rights from you.
After your patent is approved, it's issued a patent number and is no longer "patent pending." You can replace the patent pending phrasing with the patent number. This is important because it tells people that you have a patent and that they can be sued if they try to copy your product without permission. A patent number bears more weight than a patent pending status.
What Are the Different Types of Patents?
Before you apply for a patent, you should speak with a competent attorney with experience in intellectual property, business, and patents. An attorney can help ensure that your product does not infringe on the rights of other patents. A patent attorney can perform this clearance analysis and help you fill out a complete patent application.
When applying for a patent, you must choose what type is best for your invention and situation. There are three options:
- Utility patents
- Design patents
- Provisional patents
Both utility and design patents are nonprovisional.
When people refer to a "patent," they typically mean a "utility patent." It covers most types of inventions and manufacturing processes. Utility patents protect how products are used and how they work.
A utility patent in the U.S. is issued for 20 years and is effective from the filing date. It is an important tool because it excludes others from copying, selling, or importing your invention without your permission.
Utility patents are the most expensive to get from start to finish. You can expect it to cost $10,000, or higher, depending on the subject matter.
You don't see design patents as often as utility patents. This is because they simply protect how an item looks. This includes such things as ornamental features. For instance, you can get a design patent for the look of an on-screen icon or a company logo.
A design patent in the U.S is issued for 14 years, but it costs a lot less than a utility patent. On average, you can expect to pay $2,000 to complete the design patent process.
Provisional Patent Applications
A provisional patent application is not a "real" patent because once the application is submitted, it is not reviewed, and no patent is issued. Instead, a provisional patent is just a record that claims you were the first to claim rights to your product or idea. Eventually, you will need to submit a utility patent or design patent application to get issued one of these nonprovisional patents for your product or concept.
A provisional patent preserves your patent rights for one year. This buys you time to consult with an attorney and convert your application to a regular, nonprovisional patent application. It's always best to consult with a patent attorney first. A provisional patent allows you to test the market with your product while keeping your costs low.
There is also the plant patent, Australian innovation patent, Chinese utility model, and German Gebrauchsmuster. However, unless you're breeding plants or inventor from outside the U.S., you can rely on the utility and design patent options. The patent application you choose depends on your business goals, as well as the stage of your company and the subject matter.
Why File a Provisional Patent Application?
The main reason people file provisional patent applications is because it's the fastest way to say, "patent pending" on a product. If you have a tight budget or want to get something on file right away that proves your intellectual property rights, a provisional patent application is a temporary solution. It is often the first step inventors take in protecting their new products.
If your product or concept is not complete, you should file a provisional patent application because you cannot make changes to a utility patent application or a design patent application once it is submitted. However, you should never cut corners on your provisional patent application just to get it in early. The provisional patent application won't be of much benefit to you if it's lacking in critical information. Therefore, make sure that all your drawings are accurate and complete.
Many inventors use the provisional patent application as a time to fine-tune their invention while still ensuring rights to the idea. After all, it's rare for a company to stick to its original business plan. Inventions often take years of research and development until they are ready for market launch. A provisional patent protects you from someone else who comes up with a similar concept. This applies if you are the first to file a patent application.
You have 12 months from the time you submit a provisional patent application to submit a nonprovisional patent application and retain the early filing date. This timeframe cannot be extended for any reason. That's why you want to disclose as much as possible in the provisional patent application.
Benefits of a Provisional Patent
- It secures your filing date with the USPTO.
- It does not require as much detail as a utility patent.
- It doesn't cost as much to file as a nonprovisional patent.
- You can use a patent pending notice on your product once the provisional patent application is submitted.
Drawbacks of a Provisional Patent
- It adds cost to the patent application process in the long run.
- It delays enforceable patent rights since a nonprovisional patent must still be filed.
U.S. Patents in Other Countries
If you're an American, you typically file your patent application with the U.S. Patent and Trademark Office (USPTO) and receive the "U.S. Patent Pending" status. This only protects your invention from patent infringement in the U.S. For international patent protection, you must file a patent in each country where you want to sell your invention.
In a diplomatic conference in June 1970, the Patent Cooperation Treaty was signed by 124 countries, including the U.S. The treaty facilitates patent protection in all participating foreign countries. It's tricky and time-consuming to receive international patents without the help of a lawyer.
Frequently Asked Questions
- Can I launch a product before applying for a patent?
It's not advisable to sell any product without first applying for a patent. You should always consult a patent lawyer to make sure you are not infringing on the rights of others. If you don't have the money to apply for a patent, it's unlikely that you're ready to launch a product anyway.
- Can I sue someone while my product is in patent pending status?
If you notice that another company has started to sell a product that is the same, or very similar, to your own product, you can't sue until your patent gets issued. However, you can hire a patent attorney to investigate the case and prepare to sue.
- How long will my application be in "Patent Pending" status?
The USPTO has a backlog of cases and it can take anywhere from 18 months to five years to get your patent application approved. There is a fast-track program, but you can still expect your product to be in "Patent Pending" status for one to two years.
- Can I say, "Patent Pending," before submitting a patent application?
No. You are misleading the public if you put a patent pending notice on any product that does not have a patent application submitted to the USPTO. If the government finds out, you can be sued and be liable for damages of $500 per instance of the notice. This is not a risk you should take.
Steps to Get a "Patent Pending" Status
To get "Patent Pending" status, a person must submit a patent application to the USPTO. The application must disclose detailed specifications about the invention, such as drawings and manufacturing processes.
Once the application is submitted, you wait for approval. During this time, you are granted "Patent Pending" status.
A patent examiner will look at your application and check to make sure that it does not infringe on any existing patents. It's not uncommon to wait two or more years for your application to get reviewed. For a fee, you can use the USPTO's Track One program to get higher priority for your patent application.
If a patent examiner rejects your application, you can amend your claims and try again. If you successfully convince the examiner to grant your patent, you pay a fee and your patent issues. If your patent application does not get approved and goes abandoned, you must remove the patent pending notice from your product.
Achieving "Patent Pending" status is much easier than getting a patent issued. However, you cannot say, "patent pending," unless you have already applied for a patent. If you are not comfortable with completing the patent application process yourself, look into posting your patent or other business related leagl needs via UpCounsel. UpCounsel contains only the top 5% of business lawyers with an average of 14 years of experience from top-ranked law firms and fortune 500 companies.