Patent Pending: A Label with Bark & Bite

You may have noticed the phrases “patented” or “patent pending” stamped onto various products without understanding the message, power, or responsibility that each phrase carries. “Patent pending” refers to an application wherein patent protection has been sought but a patent has not yet been issued. As it may take several years, depending on the technology, before a patent issues, there can be significant lengths of time during which the owner of an invention may sell a product embodying the invention without the benefit of patent protection.

The “patent pending” label serves as notice to competitors that a patent application has been filed covering the product. Thus, while the label does not afford the rights awarded a patent owner, it does give notice to competitors that a patent could issue in the future. The “patent pending” label is often enough to deter competitors from copying an idea during the critical market development phase, even if a patent never issues.

Furthermore, the label could provide a greater monopoly than a granted patent, if only temporarily. The reason for this anomaly is that, unless otherwise requested, patent applications are not published until eighteen months after the filing date. Thus, for at least eighteen months, a product may be marked as “patent pending” and competitors will not know exactly what is claimed as the invention. Further, they will not know the strength of the patent application, potentially giving the applicant a market advantage. Accordingly, competitors may decide to sit on the sidelines until they can analyze the application and determine whether or not to enter the market.

After publication of an application, federal law allows a patent owner to obtain “reasonable royalties” from an infringer with notice of the published application beginning from the date of publication. Thus, patent owners can obtain damages for infringement occurring before the patent issues. This provides yet another thorn to deter competitors from copying your products. However, the patent claims that ultimately issue must be substantially identical to the claims in the published application to obtain a reasonable royalty. While the “patent pending” label itself is unlikely to constitute “notice” required by the statute, the presence of the label could induce a competitor to search for the published application, thus leading
to actual notice of the application.

The label offers financial “bites” in addition to the cautionary “barks” discussed above. If not used correctly, the “patent pending” or “patented” labels can result in considerable fines. It is illegal to place false markings on goods. A false marking includes the use of the “patent pending” label if an application is not in fact pending. In other words, the application must have been filed and not abandoned. Marking unpatented products as “patented” is also a violation of the statute. Moreover, branding goods as “patented” after the patent has expired is a false marking because the goods became unpatented upon the expiration of the patent. The potential damages for false marking of goods can be as high as $500 per mislabeled good. Thus, potential plaintiffs have considerable incentive to monitor goods to ensure they are correctly marked. Accordingly, manufacturers should carefully monitor their labels to ensure violations of the false marking statute are avoided.

The label “patent pending,” if used correctly, is an inexpensive deterrent useful in protecting your ideas. This “barking dog” on your product will not prevent competitors from copying your product, but it will at least give them pause before they do so.

Bobby Braxton is an intellectual property attorney at Carstens & Cahoon, LLP. He prosecutes patents and trademarks and litigates intellectual property disputes.  

This blog is maintained by Carstens & Cahoon, LLP to inform readers of recent developments in intellectual property. Solely informational in nature, this blog is not intended to create an attorney-client relationship or to be used as a substitute for legal advice or opinions. For more information, please visit www.cclaw.com

By Bobby W. Braxton

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