The term patent pending is a well recognized term of art that many inventors rightfully covet. It subtly, and very directly, conveys great meaning. It means that an inventor has taken steps to protect their invention in hopes of ultimately obtaining a patent. It also conveys to consumers the aura of innovativeness. Of course, patent pending status is just a stop on the road to obtaining a U.S. patent.
Inventor Coach Stephen Key preaches to his students about the importance of filing provisional patent applications, which allow for the term patent pending to be used, but more importantly create what Key refers to as “perceived ownership.” The concept of perceived ownership is simple. Assuming you or your patent attorney has appropriately described the invention to the fullest extent required you have locked in your rights to what you have described as of the filing date of the provisional patent application. Thus, the patent pending you now have creates the possibility of obtaining a patent covering the defined invention, which gives the perception of ownership.
Indeed, when potential licensees or those interested in acquiring your rights review your provisional patent they are evaluating not only the invention, but also the likely extent of the rights you might obtain. What ownership can you realistically obtain? That will dictate whether they do business with you, and why a carefully crafted provisional patent application and not some hastily compiled filing is of critical importance. If your perceived ownership is strong and likely to mature into solid rights at some point in the future, respectable businesses will find it easier and more advantageous to simply do business with you today and take a license. “Licensing agreements are signed every week because of PPA,” Key explained. “If the patent gets issued maybe the royalty will become 5 to 7% and if the patent doesn’t issue it is maybe 1%.” Key goes into far more detail on his philosophy in Sell Your Ideas With or Without a Patent.
Let’s take a step back. When an inventor comes up with an invention they are rightfully very proud, and seeking validation at the United States Patent and Trademark Office is virtually a right of passage. Filing a patent application quickly can be and usually is exactly what inventors should do today given the fact that the U.S. is a first to file system filing quickly is absolutely required. See First to File Means File First. But before racing off to the Patent Office to file a patent application it is helpful to consider what it is that you will do with a patent once one has issued. Are you going to attempt to license the rights so that you receive a stream of royalty income? Are you going to manufacture the product and sell it yourself? Are you going to start to manufacture and sell the invention in order to prove the market, but really hope to find a licensing partner after you have proved that a market does exist? Are you going to frame the patent and hang it on your wall? See Why do you want a Patent?
Knowing what you want to try and accomplish with the patent will go a long way to determining the proper strategy to follow, including how much time, money and effort you put into filing a patent application in order to obtain patent pending status. If you are going to hang the patent on your wall, or doing it just to be able to call yourself an inventor, one level of intensity is indicated. If, however, you are going to build a company and eventually seek investors who will carefully evaluate your patent foundation, an entirely different level of intensity is indicated. For many inventors the goal lies somewhere in between. You likely have a product, which could perhaps be expanded into a product line if the first product proves successful. You need to act responsibly today to protect what you have at the moment while acting within whatever budget you can afford to devote to this project. If things go well more time, money and product expansions make sense, but no need to put the cart before the horse.
After giving some thought as to what level of intensity is required given your goals, it is worthwhile to pivot to a bit of an unfortunate truth. It is extremely easy to achieve patent pending status. Indeed, probably too easy really. All you need to do is take a Provisional Patent Cover Sheet, attach any papers that describe your invention, send the cover sheet and attachment to the USPTO with the proper filing fee and you have a patent pending. So, obtaining patent pending status is something literally everyone can achieve on their own. In fact, years ago I was told by an inventor that they had simply filed a provisional patent cover sheet along with the fee, which is a terrible tragedy. The only “substantive” question on the cover sheet asks for the title of the invention. That provisional patent filing was worthless because it did not describe the invention. So inventors beware!
It is true that once filed a provisional patent application will allow an inventor to legitimately and lawfully use the term patent pending in association with their invention, but the application filed will only be as good, and as useful, as the description of the invention contained in the attachments filed with the cover sheet. To put it simply, if you do not completely describe the invention as required by U.S. patent laws at the time you file the application you may have a patent pending, but that patent pending can easily be worthless. Sadly, many times provisional patent applications are worthless because they can be filed without any formalities and they are not substantively examined by the USPTO. It is absolutely critical for inventors to heed this warning.
Any patent application is only useful if the invention is described with the appropriate level of detail. That means painstaking care needs to be taken to generally describe the invention, specifically describe the invention and all preferences and variations, and then to also describe all the possible permutations in between. The goal is to describe the invention in text and through the use of line drawings so that someone of skill in the area of the invention could make and use the invention having read only what you have disclosed in the patent application. Thus, instruction manual detail is what inventors need to aim for in a provisional patent application.
Armed with this background information the next reasonable question is this: So, where do you begin on the path to obtaining a U.S. patent? That is a difficult question to answer in the abstract. There are many place to begin, and truthfully you need to start everywhere. There are always more tasks than time, and less money to invest in the tasks than required. Everything needs to be done simultaneously, which is obviously impossible. So, you need to start somewhere and methodically work toward the goal.
With an invention you obviously need to start having invented something, but how far you go down the path of invention before you jump off and start a different task on the way to patent pending? That depends on the circumstances. For example, you do not need to build a working prototype in order to obtain a patent, so you certainly don’t need a working prototype before you file a patent application. You should, however, at least have some strong idea that the invention will work, otherwise you are just wasting your time and financial resources. Always remember: that which looks like it will work on paper doesn’t always translate into the real world. So, many professional independent inventors will suggest starting with at least a crude working prototype. That logic is hard to argue.
Of course, if at the beginning of your journey you decided you wanted a patent because it is essential to your business plan of licensing, or keeping your competitors out of your marketplace, then you at some point need to have an idea that you will be able to obtain a patent otherwise your time and money invested is wasted. So, on the way to patent pending status many will choose to do a patent search, first themselves and then with a professional search firm and perhaps with an opinion from a patent practitioner. It is entirely reasonable to start with a patent search on your own, and I always recommend that, and have a tutorial here. But don’t be surprised if you don’t find much even when there are hundreds of very close documents to be found. That is why investing $500 in a professional search can be a great investment, and paying for a consultation with a patent practitioner to go over that search with you can also be a wise investment as well. This will help you figure out whether you should be spending time and money on this project, or if you should move on. A professional search, with or without advice from a patent practitioner can, also help you focus the discussion of your invention in a provisional patent application and lead to a much better and stronger patent pending. Without a search you will invariably describe everything with equal importance when it is virtually guaranteed that only certain aspects of any invention are likely to be the parts that will contribute to patentability. So, a patent search can and will help you focus on what is unique.
Having said that, the cost of a patent search from a professional searcher, with or without additional advice from a patent practitioner, can approximate the cost (or be more than the cost) of preparing and filing a provisional patent application with the assistance of a patent practitioner. It would far exceed the cost of filing and obtaining patent pending status if you were going to represent yourself. Thus, some will make the business choice to file a provisional patent application without a search, or only based on their own search. It is hard to argue that business logic, particularly when funds are at a premium, which is always. But legally speaking, a patent application will always be better, more complete and more focused having the benefit of a patent search. But in the startup world sometimes costs need to be cut.
Once you file a provisional patent application and have patent pending status it is critically important to understand that the clock is ticking on next steps. A provisional application has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period can be extended only in extraordinary circumstances. Therefore, an applicant really MUST file a non-provisional patent application claiming the priority of a provisional patent application within 12 months. If you miss the 12 month deadline you may in extraordinary cases get an extra 2 months to claim priority to the provisional, but that currently comes with a hefty $1,000 fee for a small entity, and is ONLY applicable if there is an inadvertent or mistaken failure to file within 12 months. Inventors filing provisional patent applications really need to hear and understand that they have only 12 months to file a nonprovisional patent application after filing a provisional patent application in order to continue to pursue a U.S. patent. Assume the additional two months is unavailable, because it will almost certainly be unavailable unless the most extraordinary of circumstances.
For more information on what lies ahead with respect to filing a nonprovisional patent application and after, please see Requisites of a Patent Application and Understanding the U.S. Patent Prosecution Process.
For more information on how to draft a patent application to help ensure it contains the required level of detail necessary, please visit Invention to Patent 101: Everything You Need to Know to Get Started. Please also see these articles:
- Can You Refile a Provisional Patent Application?
- Ten Common Patent Claim Drafting Mistakes to Avoid
- It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
- Two Key Steps to Overcome Rejections Received on PCT Drawings
- Drafting Lessons from a 101 Loss in the Eastern District of Texas
- From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
- Understand Your Utility Patent Application Drawings
- Getting a Patent: The Devastating Consequences of Not Naming All Inventors
- Getting A Patent: Who Should be Named as An Inventor?
- Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
- Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600
- A Tale of Two Electric Vehicle Charging Stations: Drafting Lessons for the New Eligibility Reality
- Background Pitfalls When Drafting a Patent Application
- Eight Tips to Get Your Patent Approved at the EPO
- What to Know About Drafting Patent Claims
- Beyond the Slice and Dice: Turning Your Idea into an Invention
- Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- Software Patent Drafting Lessons from the Key Lighthouse Cases
- Patent Drafting Basics: Instruction Manual Detail is What You Seek
- How to Write a Patent Application
- Admissions as Prior Art in a Patent: What they are and why you need to avoid them
- Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention
- Patent Drafting: Proving You’re in Possession of the Invention
- Patent Drafting: Understanding the Enablement Requirement
- Patent Drafting 101: Say What You Mean in a Patent Application
- Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
- Learning from common patent application mistakes by inventors
- Defining Computer Related Inventions in a post-Alice World
- Patent Application Drafting: Using the Specification for more than the ordinary plain meaning
- Patent Strategy: Advanced Patent Claim Drafting for Inventors
- Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application
- Patent Drafting for Beginners: The anatomy of a patent claim
- Patent Drafting for Beginners: A prelude to patent claim drafting
- The Inventors’ Dilemma: Drafting your own patent application when you lack funds
- Patent Drafting: Describing What is Unique Without Puffing
- 5 things inventors and startups need to know about patents
- Drafting Patent Applications: Writing Method Claims
- An Introduction to Patent Claims
- Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
- Patent Language Difficulties: Open Mouth, Insert Foot
- Patent Drafting: The Use of Relative Terminology Can Be Dangerous
- Patent Drafting: Distinctly identifying the invention in exact terms
- Patent Drafting: Understanding the Specification of the Invention
- Tricks & Tips to Describe an Invention in a Patent Application
- Invention to Patent 101 – Everything You Need to Know to Get Started
- Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application
- Describing an Invention in a Patent Application
- The Key to Drafting an Excellent Patent – Alternatives
- The Cost of Obtaining a Patent in the US
Join the Discussion
3 comments so far.
Edward MullisFebruary 2, 2019 04:22 pm
Let me see if I have this straight.
If you file a provisional application, then you can mass produce the new invention and begin commercial sells of the invention to the general public with patent pending on the face of the new device????
If you bypass provisional and go straight to filing the non-provisional application, you can contract for mass production and commercial sales with patent pending on the face????
Without risking rejection of the application due to the public disclosure prior to the patent application being “accepted” and/or patent “issued,” but after the filing date on either the provisional or non-provisional application.
I am not concerned with trying to have a prototype injection molded for testing, because the device is of a kind that I can fabricate from other materials and test the functions prior to investing in having an injection mold manufactured for mass production.
After filing a patent application, when can you “safely” begin public distribution and consumer sales of the product described in the application under “patent pending” status?
Specifically if you skip the provisional and go straight to filing a non-provisional utility application, when can you safely begin public disclosure by distributing the device to the ultimate consumer?
Or by having a manufacturer make a mold for mass production of the injection molded device.
Gene QuinnDecember 17, 2018 11:54 am
Yes, that is unfortunately correct… at least for a great many these days.
Luckily for independent inventors, we have a two-tiered patent system even if no one wants to acknowledge it. The patents that are being affected by the craziness are largely software, biotech and medical diagnostic/treatments. Many (if not most) independent inventors aren’t in those areas, although independent inventors have become FAR more sophisticated. Of course, Josh Malone and his water balloons have found trouble, but not so much from the law as from a nefarious copycat. Thankfully, his invention was successful enough he was able to drive a spike through the heart of that bad actor.
We do seem to have a patent system that rewards the innovation that is worth enough, but not too much. I don’t think that is what Madison and Washington, or even Rich and Federico had in mind.
Ron LaurieDecember 16, 2018 12:29 pm
“Of course, patent pending status is just a stop on the road to obtaining a U.S. patent”
… and the grant of a U.S. patent is just a stop on the road to obtaining an enforceable patent.