by: F. Paul Vellano III, Esq.
So you have invented the greatest thing since the heated driver’s seat, congratulations! You have even gone ahead and filed a provisional patent application, another great move! However, filing a patent application, whether it be a provisional or a non-provisional, is not the end of the road. Simply put, filing a patent application with the United States Patent and Trademark Office gives you the “patent pending” status, but it is not a patent. This is an important distinction and not an exercise in splitting hairs. The term “patent pending” means your patent application is only “pending” – not that it has been allowed. It does not confer any presently enforceable rights against third parties. So what kind of advantage does a patent application provide?
While you can’t sue anyone for patent infringement with a patent application – because you have no patent that can be infringed – there are things you can do. For example, if you notify your competitor of your published pending patent application, and the competitor uses or sells the type of product claimed in your published application, you might be able to get damages from the date of your notice. In other words, if your patent application is eventually allowed as an issued patent, you may then be able to sue the competitor for patent infringement, and be eligible to collect damages going back to the date of notice. Therefore, the patent pending status can discourage competitors from practicing your invention, or open a dialogue about licensing or monetizing it.
Having the patent pending status also gives you the freedom to disclose your invention to potential investors and customers without fear of losing the ability to patent your invention in the US and abroad. The United States is now a first-to-file country, meaning that, for the most part, if a patent is to be granted, it is granted to whomever files the application for a given invention first. Accordingly, having the patent pending status before you disclose your invention goes a long way to safeguard against those who might copycat your invention or independently develop the same invention.
One more piece of advice. If you have filed for patent protection, and you create a prototype or product that practices your invention, placing “patent pending” – or “marking” your product as such, provides additional notice that you are claiming patent protection for such.
The moral of the story here is, just because the patent pending status does not provide the right to sue for infringement, it does not prevent you from setting the stage for later enforcement. Patent pending status can provide potentially valuable legal and business advantages, not to mention an effective deterrent against copying.
