Is the Term "Patent Pending" Worth the Paper It is Printed On?

Written by: N Nayab • Edited by: Wendy Finn
Published Jun 13, 2011

USPTO publishes patent applications 18 months after application, after which anyone has access to the information. The rights under patent pending does not prevent anyone from actually accessing and using such information, but allows inventors to claim royalty or damages if they do so.

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Filing for a Patent

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A patent is the grant of a property right to the inventor. The United States Patent and Trademark Office (USPTO) grants patents for 20 years from the date of filing the application. The inventor needs to apply for a patent with the descriptions, drawings, claims, an oath, and the fees. The applicant receives an application number and filing date when the patent office accepts the application for consideration.

The USPTO however accepts only complete applications. They grant incomplete application time to complete the application requirements, and the date of filing becomes the date when the applicant complies with all requirements. To allow inventors to establish an early effective filing date and thereby earn parity with foreign applicants, USPTO allows applicants for non-design patents to file a provisional application for a patent that does not require claims or declarations. This also lowers the initial cost of filing the application. The applicant has to file a standard application within 12 months, but the date of application is the date on which the inventor makes the provisional application.

The USPTO studies the application to ensure the claimed invention is new, non-obvious, complies with the law, and does not violate any rules of patent statute or practice, before granting or declining a patent. Processing takes place on a first come first served basis and may take years, but the Director of the USPTO may allow for out of turn processing on showing sufficient justification for doing so. Many patents face being rejected on first application, and usually require an appeal to address the issues that led to the rejection, leading to a second review by USPTO.

Legal Status

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A patent holder or a license holder from the patent holder, has to mark their products or articles with the word "Patent" and the patent number, to protect their invention and recover damages from an infringer. Failure to do so would require notifying each infringer of the violation, and ensuring that the infringer continues with the infringement before making a claim for damages. This leads to a tricky situation during the time the USPTO makes their examination, reviews the appeal, or during the 12 months of provisional patent.

At these times, between the date of the provisional or final application and the date of granting or rejecting the patent, the inventor who has applied for the patent, or the company having acquired the rights to use, market, or sell the product from the inventor, may use the term "Patent Pending" or “Patent Applied For” for the invention. Such phrases convey the information that the application for patent is under consideration by USPTO. The protection offered by the patent however, does not start until the actual grant of the patent.

Claim for Royalty

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The American Inventors Protection Act, 35 U.S.C. Sn. 154(d) allows the inventor rights under pending patent to claim damages for infringement. This statute gives the inventor provisional rights to obtain reasonable royalties from those who use, sell, offer to sell or import a product or invention, which is under the consideration of USPTO, or in “patent pending” mode. Regardless of the “patent pending” notice in the product, the inventor or rights holder, will have to send an actual notice to the infringer informing the patent is under consideration and asking to stop the infringement, usually as a “cease and desist notice". They can however make the claim for damages only after the receiving the patent.

The ability of inventors or right holders to assert such rights, starts when the USPTO publishes the patent application, which takes place 18 months after the filing date or priority date claimed by an application. Such claims for reasonable royalties however, do not hold unless the claimed infringement is identical to the invention described in the published patent application. The inventor or right-holder, also has to bring in action against such infringers within six years after obtaining the patent, failing which the claim to royalties lapses. Infringers also have the option to challenge the application for patent at the USPTO within two months of publication, on reasonable grounds.

In real-life, “Patent pending” may be worthless for products with short life cycles, as by the time the inventor issues a cease-and-desist notice to the infringer, the product demand may already have run its course anyway. Competitors and infringers however, remain less likely to infringe on capital-intensive products with “patent pending” notices, for such products require a long time to recoup their investments, forcing infringers to ignore “cease and desist notices” and risk lawsuits claiming royalties. Other infringers, wanting to milk a lucrative market when the opportunity exists, may actually infringe deliberately, especially when the product requires low start up costs, hoping to negotiate royalties when eventually slapped with a lawsuit.

The marking of articles as “patented” or “patent pending” when it is not the case, is against the law and attracts a penalty.

Reference

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United States Patent and Trademark Office. “General Information Concerning Patents.” http://www.uspto.gov/patents/resources/general_info_concerning_patents.jsp. Retrieved June 10, 2011.
BiOS. "Ever think about why the label "patent pending" is such a powerful marketing tool?." http://www.patentlens.net/daisy/bios/4125.html. Retrieved June 10, 2011.

Image Credit: freedigitalphotos.net/Danilo Rizzuti

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