Patent Pending Status – A Three Part Series

This is the first in a three part series on patent pending status, and it deals with an overview of the patent pending process.  I decided to write this column after looking at Entrepreneur’s magazine list of 100 fastest growing companies. Number 67 on the list was Hydro-Industries, www.no-crank.com, which produces garden hose reels that don’t need cranking, instead they rely on water pressure to wind up the hose.

The company started in 2001 with five employees and hit $23 million in 2007 sales -- great sales results. I did a search on Google’s patent site for patents from the co-founder Ehud Nagler, and found an original patent application in 2004, and then a continuation-in-part for the application in 2007.  This is a strategy companies use to overcome the requirement to publish an application after 18 months if the applicant wants overseas patent rights.  A publication of a patent application could tell competition how to design around a patent. But not if the company uses continuation-in-parts to their application, which then isn’t published for another 18 months. So by taking advantage of the continuation-in-part patent process, a company can keep competition guessing about the final patent for over four years. This is also a good strategy if you have a patent with weak claims. 

The whole patent pending and continuation process can also be easily executed by individual inventors if they know how to play the game.  Hopefully this series will help you learn how to do that.   This issue we start with an overview of patent pending status, why it is good for inventors and why you should usually request that your application not be published.  Watch for all three articles to learn some low costs tactics to protect your patent position.

Three Part Series

• Patent Pending – what it is, how you qualify and why you should request that your pending application not be published.
• Continuation-in-part and continuation requests, how to stretch out your application as a tool to prevent competition.
• Defensive publication of a potential application, how to use it as an advantage, why you need to watch out for defensive publications from others and how they can hurt you.

A Big Friend of the Small Inventor

One of my favorite stories regarding patents involves Mr. Coffee, the first big selling drip coffee makers.  When it was introduced it came out it had several issued patents. After a year or two other drip coffee makers were on the market and many of them also had patents. How is this possible? Few inventions have patents that stop all competition. In many cases experienced engineers can look at a patent and figure out how to design around a patent, which means they can make a similar product that doesn’t infringe on the existing patent.

The beauty of patent pending

To design around a patent, another inventor or your competition needs to see your claims.  The beauty of patent pending is that once the patent is applied for, you can declare patent pending, which lets people know you may soon have a patent, without disclosing what your claims are.  So competition doesn’t know what to design around.  Up until recently the patent office never published patent applications, but today they publish patent applications after 18 months unless you take steps to stop them, which is something you should definitely do as is explained later in the article.  You can keep patent pending status until your patent is either issued or finally rejected after any appeals.  It is not unusual, especially if you respond slowly to patent office actions, to have patent pending status for three to five years. 

What patent pending status offers

You don’t have any intellectual rights from a patent application.  You can’t sue someone for infringing, you cannot get a judgment against another party, nor can you collect damages.  Patent pending offers you an advantage in another way.  Patent pending means you have applied for a patent and may be getting intellectual property rights at any time. People won’t know when you might get a patent, and won’t know how long ago your application was filed unless you give them the application number, something you should never do.   So if they decide to move ahead when you are in patent pending status, they run the risk of spending a lot of time and money introducing a product that might infringe on your patent.  The safest course for people to take is to wait until your patent application is published or your patent is issued and see just what your claims are.  They can then try to figure out a way to get around your patent.  That is how you are protected, people being reluctant to proceed against you without seeing your patent.

When you may use patent pending status

You can use patent pending anytime you apply for a patent, whether it is a design, provisional or utility patent.  All that is necessary is that you applied, and it doesn’t matter if you apply yourself or if you apply through a patent attorney.  So poorly financed inventors can apply for a patent on their own and have the benefits of patent pending status for a few years, for approximately $500.  They may never get a patent with strong protection but they still can claim patent pending status.  This can also works with inventors who are trying to license a product, stating that your idea is patent pending is usually sufficient to start a conversation with companies interested in licensing your product idea.

Don’t be tempted to use the term patent pending if you haven’t actually applied for a patent. It is against the law.  35 U.S.C 292 “False Marking” imposes a fine of $500 against anyone who uses the term patent pending to deceive the public.

Using patent pending

You can put the term patent pending on your literature, on your package, on your product itself, on your web page and you can also verbally state patent pending for your product.  You should use the phrase on everything you can.  Since you have no real protection from patent pending, and no action you can take if someone copies your idea until you get a patent, your only benefit is if people know an idea is patent pending, so you need to tell people about your status any chance you get.

Publishing a patent application

If you are not planning on getting any foreign patents, you can stop the USPTO (United States Patent and Trade Office) from publishing your patent application by filing form, PTO/SB/#5 form, Non Publication Requests under 35 U.S.C. 122(b)(2)(B)(i)  www.uspto.gov/web/formssb0035.pdf  along with your patent application.  If you don’t request non-publication, the patent office will publish you application after about 18 months. If you request non-publication, your patent will probably not be published for at least two to three years.  You can typically double the time your patent claims are secret by requesting non-publication.  I recommend all inventors who are forgoing international patents to file this request for non-publication. 

Copyright 2008 by DonDebelak.com.  All rights reserved.