“Patent Pending”: Caution, there are Commercial and Legal Implications

Introduction:

As an inventor seeking to protect your new invention from infringers, you may have come across the term ‘patent pending’ and wondered what it means.

In the UK, patents can safeguard inventions and, generally speaking, prevent others from producing, selling, using, importing or keeping them for up to 20 years. However, the patent application process can be lengthy and complex. This article will explain what ‘patent pending’ means and how to use it appropriately.

What is a Patent?

A patent grants exclusive rights to inventors or assignees, allowing them to prevent others from infringing on their invention. In exchange for disclosure, a proprietor can benefit from a period of exclusivity – of up to 20 years – to exploit their invention. In order to enforce a patent, it must be granted and in force i.e., renewal fees must be up to date. To obtain a patent, an invention must be patentable i.e., it must be new, inventive, capable of industrial application, and not fall foul of subject matter that is excluded from patentability.

Territorial Rights:

Patents are territorial, meaning that a patent granted in one country only protects the invention in that country. For this reason, inventors often apply for patents in multiple countries, including through the Patent Cooperation Treaty (‘PCT’) – this enables an applicant to file an international application that can be prosecuted into one or more of the 157 contracting states of the PCT; or one or more of the 39 member states of the European Patent Office (EPO); or via another regional office:

• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)
• Eurasian Patent Organization (EAPO)
• Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent office)

Alternatively, an applicant may decide to apply directly to individual countries where they want protection e.g. at the UK Intellectual Property Office (‘UKIPO’) – depending on their IP strategy, regions of interest and budget. It is also important to note that for corresponding patents of the same family granted in different territories, it is possible to have different sets of granted claims in each jurisdiction – each may have been examined differently or the applicant may have decided to amend the claims different – this is also something to look out for.

If you search for a patent on Espacenet, for example, you should be able to see the corresponding applications that have been published.

Patent Rights as Business Assets:

Patent rights are valuable business assets that can be sold, licensed, or transferred like any other asset. A patent holder can generate revenue by licensing the patent to other companies or selling the patent to interested buyers – these are only some examples of how patented technologies may be commercialised.

Understanding ‘Patent Pending’:

Now that we understand what a patent is, and where and how it may be used, we can look at the term ‘patent pending’ – typically, a term used to indicate that an inventor has simply filed a patent application for their invention, but the application is still pending review and approval by a patent office.

However, a patent that has been examined, and potentially amended in view of overcoming certain objections, and is ready to proceed to grant is also technically ‘pending’ as it has not yet granted.

Therefore, the term ‘patent pending’ in itself does little to communicate the actual status of a patent application in its prosecution journey. However, what can be said with more certainty, and quite simply, is that a patent application has been filed and not yet granted.

The term ‘patent pending’ is commonly used by inventors seeking funding for their creation or preparing to bring a new product to market. It informs others that they hope to receive a patent and warns potential infringers that the inventor will pursue legal action if their intellectual property rights are infringed.

If you’re not clued up, then seeing a product labelled as ‘patent pending’ may make you immediately think that the entire product is protected. However, in order to understand the scope of protection that the patent application once granted actually confers, we must study the patent application and construe the meaning of the claims in view of the patent specification to determine the scope of protection.

Sometimes, the actual scope of a patent can be narrow and just because something e.g., a product, is referred to as ‘patent pending’ doesn’t necessarily mean that a patent application covers everything you may expect – instead, this can depend on the points of novelty that have been identified and found under examination to be patentable and hence, the features that are included in the claims.

A good question to ask when you see a product that is ‘patent pending’ is: What features of a product form the claimed subject matter in the corresponding patent application?

In some instances, there may be more than one patent application that is filed for a given product so you may want to perform a search in a patent database for the same applicant.

Using the ‘Patent Pending’ Notice:

If you want to use the term ‘patent pending’ for your product, you should include your patent application number or where available and the countries where you have an active patent application, or where possible, a patent publication number. This can help prevent marketplace confusion and may clarify where the patent will apply once granted.

It is important to note that just because a patent is said to be ‘pending’ in one jurisdiction doesn’t necessarily mean that no other countries are covered. There may be other countries in which a corresponding patent has already granted.

In some instances, further applications may follow particularly or a subsequent application may already have been filed and not yet published.

An applicant can file subsequent applications claiming ‘priority’ to the original application and retain the same effective filing date, referred to as the ‘priority date’ for the same subject matter, provided that the subsequent application is filed within 12 months for the same invention and by the same applicant of the original application.

For example, let’s say in April 2023 you come across a product that is ‘patent pending’ and find that a UK patent application was filed in August 2021. A subsequent application in the form of an international patent application may have been filed before August 2022 and not yet published for you to know about.

The applicant may be planning to prosecute the international application in several international territories including Canada and Japan. In this case, the same ‘patent-pending product’ of the initial priority application you saw, will now later be pending in Canada and Japan as well.

The point in the above example is that by referring only to the initial application filed in the UK, you may conclude that the product is only ‘patent pending’ in the UK, whereas, it is actually enroute to be patent pending internationally including in (e.g., Canada and Japan).

Legal status of ‘Patent Pending’:

It’s important to note that ‘patent pending’ does not grant any legal protection. Instead, it is a notice that informs others of your patent application status and warns potential infringers that you will take legal action if, and when, necessary.

Misusing the term ‘patent pending’ or falsely claiming to have a patent or a pending patent is an offense in the UK and can result in a fine.

That said, provisional patent protection can apply once a patent has been published despite not being granted yet. In this case, the patent is still ‘pending’ but some rights are conferred upon publication.

In some instances, particularly those where the claims as granted are the same as those that were published, damages for infringement may date back to the date of publication provided that the infringer had ‘knowledge’ i.e., was aware or made aware of their infringement (as otherwise there may be an ‘innocent infringement’ defense).

This means that, in some ways, a patent that is pending, or more simply, a patent that is still a patent application, can confer ‘provisional protection’ when it is published. A potential infringer could be put on notice, or there may even be a case for an interim injunction. However, a patent itself can only be enforced once it is granted.

How to Apply for a Patent and use ‘Patent Pending’:

To obtain a patent in the UK, you must follow a relatively complex and lengthy process. Firstly, your invention must be patentable i.e., new, inventive, capable of industrial application, and not fall foul of subject matter that is excluded from patentability.

You must provide a detailed description of the technical features of the invention as you are in effect disclosing your invention in a sufficient enough manner that it may be worked once the patent lapses or the term is completed. You can also include technical drawings that help to illustrate your invention and its function.

Once you have filed your patent application, you will receive a filing date and an application number from the UKIPO, and you can start using the ‘patent pending’ notice. It can take up to five years to obtain a patent, but the filing date allows you to use and market your invention while you wait for the patent to searched, examined, and hopefully – granted.

Disclosing your invention publicly before filing a patent application can be novelty destroying for your patent application.

Patent applications are published and become ‘made available to the public’ via the patent office after 18 months from the priority date (effective filing date of a patent application or an earlier relevant application where there is one).

Disclosing your invention before publication obviously means you can’t withdraw your application without it having been disclosed, and therefore you can’t ‘regenerate priority’; and there is also the risk of third parties such as your competitors filing their own patent applications.

It is always a good idea to ensure you have an appropriate confidentiality agreement in place (e.g., a non-disclosure agreement) to minimise risk if your patent application hasn’t yet published – for interest, see our recent article: Do I need an Non-disclosure Agreement (NDA) with my Patent Attorney?

Generally speaking, it can be better to wait after publication before disclosing details of your invention and even then, probably better to stay within the limits of the actual disclosure in the publication. Naturally, you wouldn’t want to disclose anything further that may destroy the novelty of future applications.

Other Ways of Protecting Products:

While patents are an effective way to protect inventions, other forms of intellectual property protection can help safeguard your business’s products. For example, trade marks can protect your brand, and design rights can protect the appearance of your products.

It is always a good idea to consult an IP attorney to discuss what aspects of your invention you believe to be patentable as you may well find that some aspects apply to other forms of IP rights.

Before applying for a patent, you should search for existing patents to make sure that no one else has already registered a similar patent. You can do this through the UKIPO. ‘Patent landscaping’ or understanding the state of the art in relation to patented technologies, can help you to draft your patent application in a way via around the search results.

After conducting a preliminary search, you may well find that it is not worth investing in filing a full patent application and that the funds may be better spend in R&D to further develop your invention.

Sometimes, it may be preferred to draft a patent application without a preliminary search and instead rely on a substantial search report from the patent office.

There is no real right or wrong approach, but it can largely depend on how confident you are and how detailed the patent application is and therefore how much time is spent in drafting the patent application – a balancing of costs in preparing for something and actually doing it.

Summary:

Applying for a patent can be a lengthy and complex process, but it’s an important step to protect your inventions and ensure that your business has a competitive advantage. Understanding the term ‘patent pending’ and using it correctly can help you communicate the status of your invention to investors, customers, and potential infringers. It can also help you to understand what it means when you see it on other products e.g., those of your competitors.

Remember, the term ‘patent pending’ does not provide any legal protection, but it can act as a deterrent to potential infringers and signal to investors and customers that your invention is innovative and potentially valuable. Before applying for a patent, it can be crucial to conduct a thorough search for existing patents and ensure that your invention meets the requirements for patentability.

In addition to patents, there are other forms of intellectual property protection available, such as trademarks and design rights, that can help safeguard your business’s products.

In summary, just remember that ‘patent pending’ is a term that simply means a patent application has been filed but not yet granted, and what is covered depends on the claims that are granted, if they are granted.

‘Patent Pending’ in context of divisional patent applications:

Another implication of the term ‘patent pending’ relates to divisional applications. A divisional application is a type of patent application that is filed as a result of dividing a previously filed patent application or ‘parent’ patent application.

A divisional application is typically filed when the parent application includes one or more inventions which may well be found during examination leading to a ‘unity objection’.

A patent application can only have one invention claimed per application, so where the examiner determines that the application contains multiple inventions, the applicant has to elect one invention for examination.

Filing a divisional application to the unclaimed subject matter in the parent application allows the applicant to continue prosecuting further claims or inventions without cancelling them.

An applicant may wish to pursue protection for each invention separately, and so the parent application can be divided up and a divisional application with the same effective filing date as the parent application.

The divisional application is filed from the original parent application, and it retains the filing date and priority of the parent application. A divisional application is examined separately from the parent application and can result in a separate patent being granted for the invention claimed in the divisional application.

Did you know that the “pendency” of a ‘parent’ patent application can have a significant impact on the ability to file divisional applications? Yes, this is another significant implication of what ‘pending’ means albeit in the context of prosecuting a patent application.

In the UK and Europe, a divisional application can only be filed while the parent application is still ‘pending’ – we mention this here because ‘patent pending’ carries an altogether different meaning in a different context.

However, this period of ‘pendency’ also refers to that period between the filing date and the grant (or refusal) of a patent application. Once the parent application has been granted, it is no longer considered pending, and filing a divisional application is therefore no longer possible.

It is crucial for patent applicants to be aware of the pendency status of their applications, as this affects their ability to pursue different aspects of their invention in separate applications. There have been some recent changes in relation compliance periods and divisional applications in the UK, which kick in from 1 May 2023 – we have provided a summary of this in our recent article here.

In conclusion, understanding the impact of ‘patent pending’ or ‘pendency’ on filing divisional applications is essential for patent applicants seeking to maintain a strong and flexible patent portfolio.

By filing a divisional application at the right time, applicants can ensure that they protect different aspects of their invention and maximise the value of their patent portfolio.

Conclusion:

The next time you come across the term ‘patent pending’, you will probably have a flood of thoughts relating to potential commercial and legal implications.

If you fancy a discussion or have any questions in relation to this article or otherwise, please feel free to get in touch.