What Does Patent Pending Mean Legally?

“Patent pending” is a designation used to express to the world that a provision or non-provisional, utility patent application has been filed with the United States Patent and Trademark Office (USPTO) to cover the identified invention or creation (“invention”). This designation can be extremely useful for a startup venture for strategic purposes.

In this article, we discuss what is a provisional and non-provisional patent application, how the patent pending designation is strategically useful to a startup venture.

What is a Provisional and Non-Provisional Patent?

A non-provisional patent (or full patent) is a complete filing with the USPT for protection of the claimed elements of an invention. For more information on what type of subject-matter is capable of utility patent protection and what elements must be present for the USPTO to grant patent rights, see our Patent Law series.

The elements of a non-provisional patent application must include the following information:

• Application forms identifying the filing as non-provisional,
• Names of all inventors,
• Residences of the inventors,
• Name or title of the invention,
• Patent agent or attorney and registration number (if applicable)
• Address for correspondence,
• U.S. Government agency with rights in the invention,
• Specification identifying the function or use of the invention,
• Claimed elements of the invention,
• Oath or Declaration of the Inventor, and
• References to any prior Art.

Once the USPTO receives all of these documents, it can begin reviewing the application to make a patent determination. This process is generally a back-and-forth between the applicant and the USPTO. For this reason, the process for applying for patent protection is known as patent prosecution.

A provisional patent application is very similar to the non-provisional, patent application. It includes all of the above-listed documents, except for the claimed elements of the invention and oath or declaration of inventor.

Filing a provisional patent is somewhat of a placeholder. An inventor may file the provisional patent application to establish a date from when the invention elements are protected. Once filed, the inventor must file an amendment to the provisional patent (converting it to a non-provisional patent) or a new non-provisional patent within 12 months. If she does so, the date of filing of the non-provisional patent is extended back to the date of filing the provisional patent.

In either case, once a provisional or non-provisional patent application is filed covering an identified invention, the inventor may use the designation “patent pending” on the product. This tells the world that the invention is subject to a current patent application. This provides numerous strategic advantages, discussed below.

Why is Having Patent Pending Strategically Advantageous for a Startup?

As previously stated, having the patent pending designation on a product puts the world on notice that there are elements of the invention that are subject to patent claim. This can dissuade industry competitors from copying or employing those elements in their products.

The great thing about the patent pending designation is that it leaves competitors largely uncertain as to the status of the patent application. They cannot be certain as to what extent the USPTO will grant protection of the claimed elements of the patent. This is a serious advantage over fully-granted patent rights. A granted patent describes in detail the claimed elements of the invention and the extent to which those claimed elements are protected. A patent application is not fully disclosed to the public. Competitors must be wary of implementing any utility elements from the covered invention.

If a competitor employs claimed elements of a granted patent application, the patent holder can sue to make the competitors cease from using those elements in their products. This would cause significant disruptions for the competitor’s business. Further, the patent holder could sue to recover any profits (or revenue) generated by the competitors as a result of the infringing invention.

The above-reference provision and non-provisional patent filing process can be used strategically as well. The inventor may make a public disclosure of the elements of the claimed invention. This could include publishing the utility elements on their website.

Public disclosure provides the inventor with 12 months to file for patent protection. The disclosure marks a period for which the inventor has the sole ability to make claims concerning the disclosed elements. The inventor may then file a provisional patent application to start the formal date for potential patent protections.

Following filing the provisional patent, the inventor then has 12 months to file a non-provisional patent application. As discussed, the non-provisional application does not necessarily include the claimed elements. At the end of the 12-month period, the inventor can file the non-provisional patent application.

Unless the inventor requests and pays for expedited review of the application, the USPTO may take as long as 3 years to review and issue an opinion regarding the validity of the patent application. This time period can be extended further if the inventor is actively involved in the prosecution and responds accordingly to the patent examiner’s requests.

If any element of the claimed invention is denied, the inventor may then follow the appeals process.

In summary, using the disclosure, provisional patent, and non-provisional patent filings consecutively can provide the inventor will several years of status as patent pending. This should allow adequate time for the inventor (or her startup company) to commercialize the invention and gain brand recognition.

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