While many are familiar with the phrase “patent pending” in its contemporary context as used, for example, by ambitious entrepreneurs in the popular television series Shark Tank, few are actually aware of the legal implications and consequences arising from the use of this and similar phrases. Loosely designating an invention as “patent pending” in the public domain is inherently risky, exposing the inventor(s) to liability under both federal patent and trademark statutes while welcoming the scrutiny of consumer protection laws.
What does “patent pending” really mean?
As used in the United States, the phrase “patent pending” indicates that a patent application has been filed by an inventor at the United States Patent and Trademark Office (USPTO). Hence, “patent pending” simply signifies the status of any patent application which has been submitted and is actively pending before the relevant patent office (e.g., the USPTO) and, therefore, attaches to provisional and non-provisional applications alike, regardless of the type of patent application (i.e., utility, plant, or design).
Most importantly, however, the phrase “patent pending” carries no legal weight and, consequently, confers no legal protection to the inventor(s) of said application. Instead, the phrase is incorporated in a marketing context as a means for notifying the public that the inventor(s) intends to seek patent protection on the marketed product.
Thus, when affixed to a product or conveyed in a promotional sense online, “patent pending” merely notifies members of the public and potential competitors that a patent has been applied for. This phrase does not guarantee legal protection unless and until the application is granted as a patent, at which point the issued patent is afforded the priority and benefit of its application filing date (subject to a few exceptions).
Why use the phrase “patent pending” at all?
Making use of the “patent pending” status identifier is most valuable as a marketing and business strategy to deter competitors from seeking their own patent rights on a similar or related invention while simultaneously discouraging unauthorized copying and duplication of the subject invention for fear of future patent infringement claims. Attaching a “patent pending” label to physical product packaging or conveying the “patent pending” status of an invention through online platforms not only touts the potential patentability and strength of the underlying invention subject to examination, but also effectively deters competitors from engaging in prospectively infringing conduct (e.g., the unauthorized copying, selling, or importing of the invention).
Additionally, by marketing a product as “patent pending,” inventors acquire positional leverage and can better negotiate licensing deals in reliance on the forthcoming legal protection of their intellectual property.
Potential liability for misuse of the phrase
First and foremost, the mere act of qualifying an invention as “patent pending” before filing a patent application with the USPTO and paying the requisite filing fees constitutes fraud and is sanctionable by fines up to $500 per offense. Pursuant to the false marking provision of the U.S. Patent Law, as outlined in 35 U.S.C. § 292(a), misleading the public by marking products with patent numbers which do not actually cover the product or alternatively misidentifying a product with inaccurate phrases (e.g., “patent applied for” or “patent pending”) authorizes penalties of up to $500 per violation. For example, including the common abbreviation “Pat. Pend.” on a product packaging label before actually filing a subject patent application qualifies as false marking and consequently warrants sanctions.
In fact, in 2009, the Federal Circuit issued a decision that significantly expanded the potential liability for inventors after interpreting the foregoing false marking provision as permitting a maximum penalty of $500 per falsely marked article. That is, under the current patent laws, the “not more than $500” false marking penalty is imposed with respect to each product inaccurately identified (with deceptive purpose) as “patent pending.” As a final note regarding liability under the U.S. patent laws, 35 U.S.C. § 292(b) further permits a party suffering a competitive injury from false marking to recover compensatory damages, which, theoretically, could exceed the $500 maximum fine per offense as specified under § 292(a).
When used in an advertising and promotion context, references to an invention as “patent pending” or “protected by patent” also implicate federal trademark provisions arising under the Lanham Act. Specifically, the Lanham Act (15 U.S.C. § 1125(a)(1)(B)) prohibits any statement “in commercial advertising or promotion, [which] misrepresents the nature, characteristics, qualities, or geographic origin of…goods, services, or commercial activities.” Accordingly, false and/or inaccurate references to a product as “patent pending” in a marketing and promotional context remain subject to scrutiny under the Lanham Act, which, unlike U.S. statutory patent laws, does not require proof of intent to deceive the public and thus provides a more attractive legal mechanism for injured plaintiffs.
Lastly, the potential of both state and analogous federal consumer protection laws promulgated by the Federal Trade Commission (FTC), which are designed to protect consumers from unfair and deceptive business practices, may be harnessed to regulate, police, and punish acts of marketing and advertising a product as “patent pending” without the requisite authority to do so.
Despite the numerous marketing, business, and competitive advantages flowing from one’s having a patent application under active consideration by an examining authority like the USPTO, use of the phrase “patent pending” in an advertising and promotional context should be cautious and calculated to avoid unwanted liability.