What does “patent pending” mean?

An application is on file and the USPTO has not finished with it. It has not issued as a patent and has not been abandoned. Until it issues, there is no enforceable patent.

A patent gives “the right to exclude others from making, using, offering for sale, or selling the invention” (35 U.S.C. 154(a)(1)). Liability under the patent law runs “during the term of the patent” (35 U.S.C. 271(a)). A pending application has neither.

It does not stop copiers today. Nobody can be sued on a pending application. Competitors may lawfully sell similar products until a patent issues.

It may earn a royalty later. Once the patent issues, the owner may obtain a reasonable royalty for the period from publication to issue (35 U.S.C. 154(d)). Two conditions apply:

• the issued claims must be substantially identical to the claims as published; and
• the other party must have had actual notice of the published application. Actual notice means actual knowledge; constructive knowledge is not enough (Rosebud LMS v. Adobe, Fed. Cir. 2016).

It keeps your filing date. Claims that issue later, from the same application or a continuation, keep the original filing date for what the specification supports. That date is what matters against products launched after it.

Most applications are published about 18 months after the earliest filing date (35 U.S.C. 122(b)). Before that, the USPTO keeps them confidential.

A provisional application needs no claims and is not examined. It is pending for 12 months from filing, and that period cannot be extended (USPTO). After 12 months it is abandoned and cannot be revived (35 U.S.C. 111(b)(5)). To keep its date, a nonprovisional application must be filed within those 12 months.

A nonprovisional application is examined and stays pending until it issues or is abandoned.

The difference matters for later claims. A continuation must claim the benefit of a pending nonprovisional or international application. A provisional cannot be its parent (37 CFR 1.78(d)(1); MPEP 211.01).

It is lawful while an application covering the product is actually pending. The USPTO says a provisional permits use of the “Patent Pending” notice for 12 months (USPTO).

Marking “patent applied for” or “patent pending” when no application has been made, or the application is no longer pending, is false marking if done to deceive the public (35 U.S.C. 292(a)). The fine is up to $500 per offense, and only the United States may sue for it. A competitor that suffered a competitive injury may sue for its damages (§292(b)).

So when the provisional lapses, or an application is abandoned, update packaging, listings and ads.

A pending application is still open. Claims can be amended or added, and a continuation can be filed before the parent issues or is abandoned (35 U.S.C. 120). New claims must be supported by the specification as filed, and they keep its filing date.

So the specification you already filed may support claims covering the competitor’s product. Once every application in the family has issued or been abandoned, that option is gone.

More on what a continuation application is and continuation strategy for competitor products.