• February 2020
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Patent Pending Infringement: Everything You Need To Know

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Navigating the process of patenting a unique invention is a notoriously complex, time-intensive, and expensive endeavor. When an individual inventor or innovative company has successfully submitted a patent application to the United States Patent and Trademark Office, they must wait for a significant period of time before they learn whether their application has been successfully approved or rejected. This adds to the challenges that inventors seeking formal intellectual property protection face.

Thankfully, the law doesn’t prohibit inventors (individual or corporate) from using their inventions publicly, mass producing them, or profiting from them before they have been granted formal patent protection. However, there is a risk that comes with using an invention publicly, mass producing it, and/or seeking to profit off it until an inventor is assured that their intellectual property is protected.

Competitors can try to capitalize off unprotected intellectual property and many ultimately do. This is just one of the reasons why inventors often advertise that they have a “patent pending” during the period of time between submitting their patent applications to the USPTO and (hopefully) receiving confirmation that their intellectual property has been safeguarded. Advertising that the process of formally patenting an invention is underway places competitors on notice that if they try to infringe upon intellectual property rights associated with any given invention in question that they may be held accountable as soon as “official word” that legal protections have been extended is confirmed.


Types of Patents

The United States Patent and Trademark Office issues patents to individual inventors and innovative companies alike. Aspiring patent holders can apply for three kinds of patents, depending on the type of intellectual property they are interested in safeguarding. Plant patents are issued for new, asexually reproducing species or hybrid species of plant life. Design patents are granted for unique designs of manufactured products and/or processes that are integral to the product or process and are generally not removable. For example, the sleek yet dynamic curves of the classic Coca-Cola bottle are protected by a design patent, as the shape of the bottle itself is intellectual property that distinguishes the overall product from its competitors. Finally, utility patents (which make up nine out of every 10 patents issued by the USPTO), are issued for unique, useful products, processes, machines, and other “manufactures.” These inventions must be reproduceable and serve a useful (practical) purpose to be considered eligible for patent protection.


Patent Application Process

There are two kinds of applications that aspiring patent holders can submit to the USPTO. To formally request patent protection, an inventor must submit a non-provisional patent application. This application tends to take months to complete, as it is so complex and requires so much information. It’s also generally wise to have one’s attorney complete a comprehensive search of existing patents before an application is filed. That way, if it is determined that an existing invention is fundamentally similar to an applicant’s creation, that aspiring patent holder can “tweak” their design, product, or process until it is genuinely unique (and thus far more likely to be granted patent protection by the USPTO).

The process of undertaking a comprehensive patent search is also time-intensive. In short, the act of completing a formal, non-provisional patent application takes a great deal of time and effort. The USPTO recognizes that every day that passes before a formal application is submitted represents a risk that a competitor will try to infringe upon unique work or that so-called “prior art” will emerge and threaten the viability of that non-provisional request, it also allows inventors to submit a provisional patent application (for utility and plant patents, not design patents) up to one year before a non-provisional patent application is filed.

Once a properly executed provisional patent application is filed with the USPTO, a non-provisional patent application filed within one year is granted the benefit of the provisional patent application’s early filing date. Why does this matter? The USPTO treats the non-provisional patent application filing date as the starting point against which claims of prior art and acts of infringement are judged. Essentially, the sooner an inventor secures a favorable non-provisional filing date, the sooner their work is protected against infringement and claims of prior art. An inventor may use the phrase “patent pending” as soon as either a provisional patent application or a non-provisional patent application is filed with the USPTO and a non-provisional patent application filing date has been secured.


Patent Pending Infringement Protections

Once a non-provisional patent application filing date has been secured, an invention is classified as “patent pending.” As a result, this work is tentatively protected against infringement. There is no guarantee that submitting a request for patent protection to the USPTO will result in the approval of this request. However, if the USPTO does ultimately approve a pending patent application, any infringement that occurs between the non-provisional patent application’s filing date (which may be secured by a provisional patent application, as explained above) and the approval of patent protections can serve as cause for a legal claim of action. Essentially, if anyone infringes upon an inventor’s intellectual property rights while a patent is pending, that inventor can hold the infringer accountable in court as soon as the USPTO officially grants them formal patent protection.

Some inventors like to use the phrase “patent pending” in their advertisements and when discussing their inventions, primarily because it places competitors and would-be infringers on notice that patent protection is actively being pursued. Others refrain from using this phrase for a variety of reasons. Regardless of whether you formally announce that your invention is benefitting from patent pending status, the tentative protections of this process still apply.


Responding to Patent Pending Infringement

If another individual or company infringes on your intellectual property during the “patent pending” period, know that you’ll be able to take legal action once your patent protection has been formally granted. Until that time, your hands are tied, to a significant extent. But that doesn’t mean that you and an experienced intellectual property attorney can’t begin preparing to hold the infringer accountable as soon as the USPTO approves your non-provisional patent request. In general, you’ll need to prove that the infringer had knowledge that they were using or otherwise benefitted from your intellectual property.

By working with an attorney to prepare your case while your patent is still pending, you may be able to take advantage of legal and practical strategies that you otherwise wouldn’t have thought of. For example, your attorney may or may not have you formally notify the infringer that they are stepping on your “patent pending” intellectual property rights. Under most circumstances, it will make sense to formally send the infringer a notice of application to the USPTO, as this notice can serve as proof that any additional infringement activity was knowingly and intentionally undertaken.

Whether your attorney will advise you for or against taking such action will depend upon the specifics of your circumstances. For example, do you already have proof that the infringer is knowingly using/benefitting from your intellectual property? If so, taking this action may be unnecessary or otherwise ill-advised. Either way, working with an attorney now may help to better ensure the ultimate success of your infringement case filed down the road.


The Importance of Your Patent Application Filing Date

In the event that you choose to file legal action against infringement of your intellectual property rights that have taken place during the patent pending phase of the protection process, it’s important to understand that you can only recover royalties and damages related to infringement that occurred after the USPTO issued your patent application filing date. Any infringement activity that took place before this date is almost always non-recoverable. You will also need proof that the infringer either received a copy of your notice of application or otherwise clearly had knowledge of your intellectual property rights.

It’s important to note that you should never characterize an invention as “patent pending” if you have yet to formally file a provisional or non-provisional patent application with the USPTO or if your patent application has been rejected and you have yet to file an appeal. Mischaracterizing intellectual property rights as patent pending when no patent pending status has been earned can result in hefty fines and other legal consequences. It is additionally important to understand that if you fundamentally change your invention after submitting a patent application that your altered work may not have the same patent pending tentative safeguards attached to it until your application is altered or a new application is submitted. Any concerns about this caveat can be directed to your attorney.


Legal Assistance Is Available

If you’re interested in seeking patent protection for your invention or you’re concerned that someone may be infringing upon your intellectual property rights, consider scheduling a consultation with an experienced intellectual property attorney at LawTrades today. Our team has extensive experience navigating all aspects of intellectual property law, from effectively drafting both provisional and non-provisional patent applications to enforcing existing intellectual property rights. Once we learn more about your unique circumstances, we’ll be happy to advise you of your legal options and provide you with informed guidance and support moving forward. We look forward to speaking with you.