What Is Patent Pending

To paraphrase the always quotable Ralph Wiggum: “Miss Hoover, what’s a patent?” You probably already have a general understanding of what a patent is and what it covers, but the USPTO offers different varieties, any one of which may be more appropriate for your concept than the others.

The three most common varieties are the utility patent, the provisional patent, and the design patent.

The Utility Patent

A “patent” typically means a utility patent. Utility patents are the gold standard of the system, covering useful, novel and non-obvious processes, machines, and the like for a term extending from issuance to 20 years from the earliest effective filing date. Laws of nature, mental processes, physical phenomena, and abstract ideas are ineligible and need not apply.

The utility patent is a powerful tool since it carries with it the right to exclude others from making, using, selling, offering to sell, or importing your invention. Beyond the benefits of exclusivity, the utility patent is a property right, one that can be licensed or sold, and one that may even outlive the company.

To apply, an inventor provides a detailed specification to the USPTO, disclosing how to make and use the invention, drawings, and one or more claims, which define the legal boundaries of your invention. (For an example of a patent claim, look at the last few pages of this document).

Then you wait. You wait for a patent examiner to review your application. Since there are a lot of pending applications, a wait of two years is not uncommon, though the new Track One program will move you toward the front of the line for a fee.

If the examiner rejects your claims, all is not lost. You have an opportunity to amend the claims and convince the examiner that you should be granted a patent. If you are successful, you pay an issue fee and your patent issues. Congratulations.

The utility patent is the most expensive of the group, easily costing over $10,000 from start to finish, and often much higher depending on the subject matter.

The Provisional Patent (Application)

When you absolutely need to get something on file right away, or have a tight budget, the provisional application is a temporary alternative.

Calling it a “patent” isn’t quite accurate since a provisional application will never turn into a patent. What a provisional application does is secures your filing date with the USPTO, but without some of the formalities of a utility application such as claims, an inventor declaration, formal drawings, and the like., making it far less costly to prepare. In addition to securing a date, you can tell people that you have a patent pending which, while of no legal significance, can have marketing significance (see below).

One other benefit is that the provisional can give you time to fine-tune your concept while preserving your rights. How often do companies stick with their original business plan? Rarely. A provisional can lock in a filing date for the initial concept while you revise and expand the idea.

The catch is that once filed, a provisional application simply languishes in the files of the USPTO. It is never examined or published. Rather, the applicant has one year from filing to file a new utility application that claims priority (i.e., takes advantage of the filing date) of the provisional application. That earlier filing date can be critical if, for example, you have made an early public disclosure or someone else has come up with a similar concept.

There’s a few other minor drawbacks. A provisional application is another step in the process and ultimately adds cost. It also delays having enforceable patent rights by up to a year, which can be significant depending on the product life cycle. But it can be prepared in a hurry, and on a budget, to preserve the status quo until you’re ready to file a utility application.

What Does Patent Pending Mean

The Design Patent

Thanks in part to Apple, design patents are now very much in vogue. Once a forgotten area of patent law, the USPTO’s cup runneth over with design patents covering on-screen icons, GUIs, and tablet and smartphone designs. Hardly the shoes and automotive parts of yore.

A design patent protects the ornamental characteristics of an article such as the surface ornamentation or the configuration of the product itself. In other words, where a utility patent protects the way in which an article is used and works, a design patent protects how an article looks.

Unlike a utility or provisional application, a design application is limited to a series of drawings showing the article. Rather than words, the scope of the invention (the claim) is defined by what the drawings disclose (less the dashed lines).

Design patents are relatively inexpensive to get with most costing less than $2,000, and most will issue in less than a year. Once issued, a design patent lasts for 14 years.

The same useful-novel-non-obvious requirements apply to design patents, with the additional restriction that the design cannot be driven primarily by the function of the article (think a particular type of key that is designed to fit a complementary keyhole). Functional articles are the province of the utility patent, not the design patent.

A design patent also provides a right to exclude, though damages are somewhat different. A quirk of history allows recovery of an infringer’s profits for design patent infringement which, as Samsung will tell you, can hurt.

A Word About “Patent Pending”

“Patent pending” is a phrase that is seen often, has no legal significance, and can get you into a jam if you in fact have no “patent pending.”
The reasons for marking “patent pending” are obvious: notice to competitors and the general public that an as-yet-unissued, unpublished patent application is on file. It can ward off competition and enhance the stature of your product, but false marking, i.e., marking goods where no patent application has been filed—whether it be utility, provisional, design, or otherwise—carries consequences.

Section 292(a) of the Patent Act imposes a fine of up to $500 per mismarked article, where the marking was done for the purpose of deceiving the public.

While affixing your patent number to covered products is important once your patent issues, saying “patent pending” while the application is being examined has no legal consequence. If there is a commercial reason to do so, be careful and consult your patent attorney. Recent changes to the law have tightened the availability of false marking damages, but caution is advised.

I know what you’re thinking. What about plant patents? The Australian innovation patent, German Gebrauchsmuster, and the Chinese utility model? Topics for another day.

For now, remember that the U.S. provides three useful options (unless you’re a plant breeder) to patent your novel idea or design, each of which have advantages and drawbacks. The path you choose depends on your goals, the stage of your company, and the subject matter of your invention.

Choose wisely.