According to the USPTO the phrase ‘patent pending’ carries no legal effect. To describe an invention as patent pending simply informs the world that you have filed a patent. It is actually far more important that you understand what patent pending means in your particular circumstance. You should understand what kinds of claims your pending patent can get and what your pending patent can and cannot protect.
Patent Pending Means You’ve Got a Filing Date
One way to understand patent pending is a statement that you have a filing date. A filing date is now more important than ever. Until recently, United States law gave priority to the first person to actually invent an invention, even if they were not the first person to file. So even though you had filed for a patent first, another inventor could actually obtain a patent for the same invention if she demonstrated that she had invented it first.
Now priority goes to the first inventor to file, which makes getting a filing date all the more important. Additionally, having a filing date means that any future publications or patents will no longer qualify as prior art. If someone publishes some or all of your invention, if it is after your filing date then it does not qualify as prior art.
What Does Patent Pending Mean
Patent pending is an ambiguous term because you do not have a patent yet. So what exactly is pending? Patent pending means you are negotiating, or waiting to negotiate, the claims with the USPTO. This negotiation phase is called ‘patent prosecution.’ The scope of the final patent is unknown, so what exactly do you have?
Patent valuation is a complicated process and there are ways to value a patent application, even while it is waiting to undergo prosecution. There are companies that will license pending patent applications if they see great potential in the products that the patent would eventually, possibly claim. There are investors who prize well-written patent applications that might issue as broad claims.
The best answer to what exactly is pending is the scope of the patent’s specification. For example, if you file a patent application for a food seasoning that is made from the novel (new and innovative) combination of 3 kinds of ingredients then there are some specific ways to discuss the scope of your potential patent.
If one of the ingredients is garlic salt and you broadly describe dozens of different formulations of garlic salt then you could write your claims to broadly cover garlic salt. Moreover, if you discuss three or four alternatives to garlic salt (such as onion powder and salt) then it would be easier for you to make claims that are broader than garlic salt. That means that your scope of possible claims is broader than if you only discuss your preferred variety of garlic salt. This could give your patent a wider space within the food seasoning market.
The specification is just one factor that determines the scope of a potential patent. The other is the prior art. For example, there are many food additives that contain garlic salt or its equivalents. Depending on the novelty or your other ingredients or the novelty of their amounts or the way they are mixed together that will determine what kind of claims you can get issued.
If you have a broadly-written application that teaches an invention unlike anything in the prior art then you have a wide range of possible claims. If you have a narrowly written application incrementally improves over the prior art
Know What is Protected and What is Not
Understanding what kinds of claims your specification supports is also important so you stay within the scope of your pending patent. Only claims made in the pending patent are protected, and you can’t add new claims once the patent is filed.
For example, you may have a patent pending on a new kind of machine adapted for cutting cloth. In talks with a company that you want to license your patent they ask if how you would modify the machine to cut metal foil. You think for a moment and realize that with one small change you could use the machine to cut foil. Does your pending patent include that one small change?
If it does not, then you need to wait to file a new patent before you tell the company or make sure that you can document the conversation is confidential. If not, then your discussion with the company will be prior art. You will need to tell the patent office of your conversation and it will be used against you in prosecution if you ever file for a patent on the one small change.
Inventors need to understand the scope of their inventions: what is protected, what is not and what kinds of claims the patent can get.
LegalZoom can help you file a provisional patent application. You start the process by filling out our online questionnaire. We check your answers for completeness, then file the application with the USPTO for you. Our service also includes access to professional patent artists and a review of your application by a patent agent.