What is Patent Pending?

"Patent pending" or "patent applied for" is a label on your invention that offers some legal protection after you have filed a provisional or non-provisional (regular) patent application. The person or entity that files a patent application has patent pending status until the patent issues or the application is abandoned.

You can use the patent-pending label in these situations:

  • A provisional, utility, or design patent application has been filed with the USPTO

  • An Office Action has been sent from the USPTO within the last 6 months

  • A Notice of Allowance has been sent from the USPTO and you have paid the issue fee, but the USPTO has not issued the patent yet

What Kind of Protection Does a Provisional Patent Application Provide?

Saying that an invention has a patent-pending does not provide any solid legal protection; it is purely for informational purposes. You cannot sue someone for copying your invention while your patent application is still pending. However, you may be able to get an injunction to stop the manufacturing of the product until the review process has finished.

If someone infringes on the idea by making, using, or selling your invention, the patent is later granted, and you put the word "Patent" with the patent number on all the inventions, you can then take legal action against the copier and sue for patent infringement. Patent infringement damages accumulate after a patent application is published and have the potential of triple damages if the inventor proves it is willful infringement. If necessary, the inventor may also get an injunction to stop the company from manufacturing and selling more infringing products.

Keep in mind that any part of an invention that isn't included on the original patent application isn't protected. This means that if you make any significant changes to your invention after you file the application, those changes aren't legally sheltered. You will be required to file a new patent application for the changes you made to your invention.

A provisional patent application can include modifications or alternatives for your invention, even if these don't work well. Include these in your application so they are protected in case you perfect them later on.

Resist any urge you may have to claim that an invention has a patent-pending before you actually file the application. If you use the patent-pending label before you file a patent application and have the patent application be accepted for examination by the USPTO, you can face serious fines — up to $500 per incident.

To be more specific, here are example scenarios where you should not use the patent-pending label:

  • A patent attorney has been hired to prepare a patent application

  • A patent attorney sends a draft of the patent application to review

  • Your patent application is abandoned

  • Your patent application has been granted as a patent

What If Someone Infringes on an Invention During Patent Pending?

It is unlikely that anyone else will seek to profit from your invention when it has a patent-pending. Most businesses and inventors are aware of the potential consequences they may face if you are granted the patent.

However, if you discover that someone else is manufacturing or using your invention during the patent-pending phase, you may be eligible to take advantage of provisional royalty rights. This means you can profit monetarily from any sales that a copier makes from selling your invention. The word "provisional" in provisional royalty rights is unrelated to a provisional patent application and does not rely on if a provisional patent application was filed.

To qualify for provisional royalties, the following must be true:

  • You have filed a patent application, and the application has been published. It is not merely on file. The USPTO usually publishes applications 18 months after they have been filed.

  • The copier of your product has read your patent application. You can send a letter to the copier along with a copy of the application.

  • You can only reap provisional royalties after your patent is granted; you'll be granted back-pay for sales during the patent-pending phase

  • The claims in your patent, once it is granted, must be almost the same as the claims in the application you originally filed.

Typically, the substantial identical requirement is the most difficult since changes to the claims are often made at the patent prosecution stage. This is when your patent attorney would negotiate with the patent examiner about the amount of patent protection allowed in the patent. It is generally unusual for the recovery of royalties from the provisional rights section.

In addition to sending a notice letter to the copier of your product, you may want to ask the copier to stop or you may want to start a licensing discussion. However, the copier is not required to respond if they think you will not get the patent or if they believe your patent would not cover their products. The copier may even decide to redesign the product after receiving your notice.

If you do notice someone is copying your product, you may be able to speed up your patent application consideration. However, you may receive a benefit due to the long patent process if the copier builds a market and then you can obtain licensing fees once your patent is granted.

You may also make other IP claims such as copyright infringement, trade secret misappropriation, breach of contract, trade dress infringement, or other types of infringement.

What Are the Other Advantages of Filing a Provisional or Non-Provisional Patent Application?

A Provisional Patent Application Provides Time and Saves Money

The advantages of filing a provisional patent application go beyond warning would-be copiers away.

Filing a provisional application is less expensive than filing a non-provisional application. This is because the provisional application requires less detail than a regular patent application and therefore takes less time to prepare. Attorney fees and filing fees are lower for provisional applications. You might even be able to forgo hiring an attorney altogether until you are ready to file a non-provisional application.

However, if your invention is even moderately complex, it would be wise to enlist the help of an attorney from the get-go. The fact that provisional patent applications require less detail than their non-provisional counterparts does not mean that you can cut corners. Taking care of the provisional application may help make the process smoother when you submit a regular patent application.

A non-provisional patent application can cost well over $10,000 to file, but a provisional application may cost only hundreds of dollars. The base fees for filing a provisional patent application are as follows:

  • $260 for other entities

  • $130 for "small entities" (individuals, 501(c)(3) nonprofits, universities, and businesses with fewer than 500 employees)

  • $65 for "micro-entities"

Other fees may apply, such as a surcharge for a late filing fee or cover letter and a sizing fee for every 50 sheets over 100 in your application. These fees also vary, with discounted fees available for those who qualify as a small or micro entity. You will also need to factor in the price of professional drawings and attorney fees.

The government filing fee for a non-provisional patent application begins at $400. But again, the filing fee itself is only a small fractional of the overall cost of obtaining a patent.

It is a good idea to file a provisional patent application as soon as your invention is developed to the point where you can describe it in detail.

Patent Applications Can Open the Door to More Funding

Whether you file a provisional or non-provisional application, there are even more benefits you can expect, particularly if you manage a startup company. When you have a patent application on file, it signals to investors that you are serious about your invention, and giving this image can help you to secure funding. One Berkeley survey found that venture-backed startups had an average of six patents, whereas startups without venture capital had no patents.

You Want to Be the First to File

In the United States, the first person to file for a patent for a particular invention — not the first person to invent the item — is the one who will be granted the patent. Therefore, it is wise if you file a provisional patent application as soon as you are able.

Going From Patent Pending to Obtaining a Patent

After you submit a provisional patent application, you will have one year to file a non-provisional application. There is no way to extend this deadline. Therefore, you must use your one year wisely to perfect your invention and prepare to file the non-provisional application. If you do not meet the one-year deadline, then you have abandoned your provisional patent and you must stop using the term "patent pending."

It is a good idea to work closely with an attorney during the patent application process, whether or not that attorney helped you with the provisional application. Here are some facts you need to know about how to obtain a patent:

  • All of the inventors must be listed on the application.

  • The application is very detailed. It includes a specification, which includes an overview of your invention, and claims, which point out the parts of your invention you want to gain protection for. You will also be required to submit detailed drawings of your invention.

  • It can take years for an application to be approved, and the USPTO rarely grants a patent on the first try. You will need to prepare to deal with objections that the Patent Office raises. Typical patents are in patent-pending status for 1 to 3 years, but other patents such as software and electronic applications may take 3 to 5+ years.

  • Before granting a patent, the USPTO goes through a prior art search and evaluates the patent application for patentability.

Types of Patent Pending Notices

Although there is no required format for a patent-pending notice, here are some common formats:

  • Patent Pending

  • Patents Pending

  • U.S. Patent Pending

  • Pat. Pend.

  • U.S. Pat. Pend.

  • Patent Applied For

  • U.S. Patent Applied For

  • U.S. and Foreign Patents Applied For

  • Patent Applied For in the U.S. and Abroad

Patent Pending: An Inventor's Friend

Being able to apply a patent-pending label to your invention will protect your invention from copiers who might seek to profit from your ingenuity. Although it does not provide any solid legal protection, the label warns away would-be infringers, and after you obtain a patent, you will be able to take action against them. The patent-pending designation also lets investors know that your invention is close to perfection, a fact that can help you to secure startup funding.

Going from patent-pending to obtaining a patent is a tricky process, but you can navigate it successfully when you enlist qualified legal help.

If you need help with getting a patent, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.