Patent Pending Statements

Use of the "patent pending" designation is seen on both legitimate and questionable products in the marketplace. However, there is an interesting dividing line between aggressive advertising claims deemed acceptable by Lanham Act standards and those claims requiring supporting evidence for patentability.

The Only Patent Pending Breast Pill

Bountiful Breast, advertised on page 230 of the July 2005 issue of Glamour magazine claims it is the "only patent pending breast pill."  This statement cannot be substantiated by its maker.  All U.S. patent applications are generally preserved in secrecy until they are published after 18-months.  In rare circumstances, some applications are published early at the request of the applicant.  In other cases, the applications are filed with a request not to publish and are therefore not available for public inspection until (and if) a patent issues.  Thus, it is impossible to claim that any invention is the only one of its type "patent pending." 

Patent Pending for Marketing Value

All design, plant, provisional utility, and non-provisional utility patent applications pending before the U.S. Patent & Trademark Office (PTO) may be deemed "patent pending."  Accordingly, from the simple statement alone, it is impossible to know the scope of protection.  Furthermore, even the most frivolous patent application can obtain "patent pending" status by payment of the requisite filing fee.

For legitimate inventions, the "patent pending" term can be a signal to potential competitors that a patent may issue on the technology at any time.  Thus, it may give competitors pause before investing the capital to manufacture a product or offer a service that may go on-patent at any time.

Infringement of a Patent Pending Invention

Prior to the American Inventors Protection Act (AIPA), the sole remedy for infringement of a "patent pending" technology was to file a Request for Expedited Examination under Section 708 of the Manual of Patent Examining Procedure.  In other words, there were no repercussions to the infringer of the pending patent application and the only mitigation available was that the PTO would try and issue the patent as fast as possible so the patent holder could enforce his or her rights upon receipt of the patent.

With the passage of the AIPA, a patent applicant can send an infringer a copy of the pending patent application publication.  This is normally issued after the application has been pending for eighteen (18) months.  However, it is possible to request early publication of the patent application.  The infringer must be put on actual notice (i.e., sending the materials by a carrier that requires a delivery signature).  Once put on notice, the infringer may be liable for damages that accrue from the date of notice provided the resultant patent issues with substantially the same claims as those found in the patent application publication.

In the figure above, Patent Applicant learns that Infringer is utilizing the patent pending technology.  Patent Applicant sends a copy of the patent application publication to Infringer.  If the patent later issues with substantially the same claims as that in the patent application publication, the Patent Applicant (now patent owner) can file an infringement complaint in U.S. District Court seeking damages for the infringement not only from the date of the patent issue, but all the way back to the time that Infringer was put on actual notice of the patent application publication.

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