Is a Provisional Patent a Patent Pending?

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When individual inventors and innovative businesses produce a new product, create a new design for a product or devise a new way of manufacturing their goods, their work is not automatically protected under U.S. law. In order to obtain legally enforceable intellectual property protections, inventors and businesses must work with experienced attorneys in order to obtain government-issued patent safeguards. Obtaining a legally enforceable patent is a notoriously complex process. It has often been observed that of all the intellectual property protections available, securing a patent is the most time-intensive, detailed and labor-intensive process of all. It is precisely due to the complexity of this process and the consequential nature of an application’s approval or rejection that it is so important to seek legal guidance as early in the patent petition process as possible. Even though it will take time to properly obtain a formal patent, your attorney can help to ensure that you can use the term “patent pending” as soon as possible after your invention becomes eligible for patent review.


What Does it Mean to Have a Patent Pending?

When an inventor or business submits either a provisional patent application or a non-provisional patent application to the United States Patent and Trademark Office, they are then allowed to use the phrase “patent pending” in reference to the innovation outlined in the application. Provisional patent applications are therefore not the same as patent pending status. Instead, permission to use the phrase patent pending in reference to one’s work alerts competitors and the general public that you are engaged in the process of seeking legal protections for that work. This phrase is an important intellectual property tool because it warns competitors and would-be infringers that the USPTO has already been informed that the work in question is your intellectual property and that work is currently under review by the government.

The primary purpose of obtaining patent protection is to obtain exclusive legal permission to use, market and/or financially benefit from a product or design. It is therefore important to communicate to those who might seek to infringe upon your invention that you have secured a filing date with the USPTO and are therefore “on your way” toward receiving recognition of legally enforceable patent rights. The fact that a patent pending signals you have obtained a favorable filing date with a relatively obscure government agency may not mean much to most. But it will alert your competitors to a truly consequential turn of events.


Non-Provisional Patent Application Filing Date

In order to obtain formal patent protection, you must submit a final, non-provisional patent application to the USPTO. When the petition is formally received by the USPTO, the agency will stamp it with a filing date. This filing date is critical because it is the date against which patent review professionals employed by the USPTO will judge the novelty of your work. Similarly, it is the date against which the novelty of your work will be judged against any claims of prior art, both during the USPTO review phase and during any intellectual property infringement cases you may be involved in after your patent is secure. Should you need to enforce your rights or should you need to defend your rights against infringers, this filing date will be consequential to the outcome of your case. As a result, it is critically important to work with your attorney on securing the most favorable filing date possible for your non-provisional patent application.


Provisional Patent Application Filing Date

Non-provisional patent applications are detailed documents and must be supported in a myriad of ways. As a result, non-provisional patent applications can take months for you and your attorney to properly complete. This is problematic, because it is so important to obtain the most favorable filing date possible in order to protect your work against claims of prior art. In order to secure a favorable non-provisional patent application filing date while you and your attorney are still working to complete the formalized petition, you may submit a provisional patent application for any eligible work save for a design. As nine out of 10 patents issued by the USPTO are utility patents, most inventors and innovative businesses are able to take advantage of this legal tool.

Submitting a provisional patent application does not allow you to seek a formal patent. The only way to secure legally enforceable patent protections is to file a non-provisional patent application. However, filing a provisional patent application up to one year in advance of filing your non-provisional patent application will secure you a far more favorable filing date for that formalized petition. Essentially, when your attorney files a provisional patent application on your behalf, it is stamped with a filing date. As long as you submit your non-provisional patent application to the USPTO within one calendar year following the submission of your provisional patent application, your non-provisional patent application will benefit not from its own filing date but from the filing date associated with the provisional patent application. Utilizing this legal process will buy you valuable time in regards to protecting your work against potential infringers and against claims of prior art.


Benefits and Drawbacks of Using the Phrase “Patent Pending”

You can legally use the phrase “patent pending” when you have submitted a provisional patent application and/or a non-provisional patent application to the USPTO. Because either process secures you a filing date with the agency, you can therefore alert your competitors to the fact that you are actively pursuing intellectual property protections and have already formalized the date against which the novelty of your work will be judged. It is important to remember that if you do not submit a non-provisional patent application within one year of submitting a provisional patent application that you will no longer be able to take advantage of the favorable filing date associated with the provisional patent application or use the phrase patent pending in regards to your invention. This is one of the reasons it is so important to retain the services of an experienced intellectual property lawyer, who can help you to submit your non-provisional patent application both completely and without unnecessary delay.

The primary benefit of using the phrase patent pending when referring to your work is that it will likely deter your competitors and would-be infringers from attempting to compromise your intellectual property rights. If a competitor or would-be infringer knows that the invention is already benefiting from a filing date against which prior art and infringement claims will be judged, it makes little sense to invest valuable time and energy into compromising your intellectual property rights. A secondary benefit of using the phrase patent pending is psychological and pertains to your potential customers and investors. “Patent pending” suggests that an invention is novel and may even be on the cutting edge of a specific industry. Using this phrase may make your invention more appealing to customers and/or investors.

With that said, there are potential drawbacks to using the phrase patent pending. For example, if you have filed a provisional patent application and are considering modifying your invention in any significant way before you submit your non-provisional patent application, know that such modifications may invalidate your legal right to use the phrase in association with the original provisional patent application. In addition, if you misrepresent your patent pending status in any way, you could become vulnerable to certain legal liabilities. As a result, if you have any questions about whether it makes solid legal sense for you to use this phrase in reference to your invention, please do not hesitate to ask your attorney. It is generally a far better idea to ask questions and tread cautiously than it is to compromise your intellectual property rights by acting before receiving experienced legal guidance.


Intellectual Property Guidance and Assistance Is Available

Given the complexities of the patent process, you may be tempted to forgo submitting a non-provisional patent application to the USPTO altogether. Please know that an experienced intellectual property attorney will be able to shoulder a great deal of the work and stresses of the patent process so that you can focus on perfecting your invention and diving into your next creative process. Even if you only plan to use your invention yourself, failure to obtain proper patent protections may leave you vulnerable to claims of infringement if you ever use your invention publicly or seek to profit off of it in any way. It is therefore critically important to seek the guidance of an experienced attorney as soon as your work becomes eligible for patent protection. An attorney’s assistance is an investment well worth your time and resources, as an experienced attorney will place you in the best position possible to avoid having your non-provisional patent application rejected by the USPTO.

If your invention is complete enough to be considered eligible for patent protection, please consider scheduling a consultation with LawTrades today. Each of the experienced attorneys on our intellectual property team is passionate about protecting the rights of inventors in efficient, effective and cost-conscious ways. We look forward to speaking with you.