Patent Pending: An Explanation

It can take many years for a patent to be granted after the application is submitted to a patent office.  Three to four years is typical in many jurisdictions. The actual wait depends on the jurisdiction it is filed in, and sometimes it isn’t clear just how long that will be. It is a great relief, then, that inventors enjoy rights as their work is conferred ‘patent pending’ status in the interim.

In England and Wales, should the patent be granted, injunctive relief or retrospective damages are available if the patent was infringed upon during the patent pending phase following publication. The law is similar across the pond: the US Supreme Court recently confirmed the enhanced damages doctrine in the closely watched Halo Electronics v. Pulse Electronics case, smoothing the way for inventors to claim up to triple the amount of damages incurred for patent infringement.

Legal protection

Affixing the patent pending descriptor to products notifies the public that the product may enjoy legal protection in the future. Given the legal rights that patent pending status affords, prospective imitators are unlikely to copy inventors with a strong chance of securing a patent. The threat of paying out enhanced damages after lengthy and time-consuming litigation, or the prospect of an injunction following heavy investment in R&D and marketing, are strong deterrents to would-be copiers. As such, companies are more likely to buy or obtain a licence to use the patent.

However, to ensure the legal rights conferred by such markings are properly enjoyed, they should bear the relevant patent application number, or otherwise a reference to where such numbers can be found – for example, on a website. Simply marking an article with “Patent Pending” may not be enough.

Easier to secure funding

Patent pending status is attractive to investors. In practice, savvy businesspeople take steps to protect their IP before pitching to angel investors or uploading their ideas onto the Internet for crowdfunding. Investors feel more confident about dealing with inventors when their invention is provisionally protected, and very few angel investors agree to sign NDAs before entertaining business proposals. Going the crowdfunding route without appropriate IP protection leaves you open to the exploitation of your concept by someone else; the imitator could even file his or her own patent using your idea, especially if they conceive additional improvements to the core concept.

Time for improvements and R&D

The Paris Convention for the Protection of Industrial Property, which very few countries are not party to, considers the filing date of an initial patent application to be the ‘priority date’; no matter the jurisdiction, if a subsequent application is made before twelve months after the priority date, the original application supersedes any subsequent applications filed by others. Apply for a patent in January to cover your novel DNA sequencing process in the UK, and when a lab in Belgium seeks a patent for the same thing, your status as the originator remains in force as long as you apply for protection in Belgium within a year of the priority date. Such internationally recognised protection creates breathing space for further research during the patent pending stage, and there are mechanisms to extend the 12 month period, in some cases up to 31 months from the original filing date.

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