Patent pending is a term that you will often hear on programmes like Dragons' Den or The Apprentice. It occurs when inventors and entrepreneurs are talking to potential investors or collaborators.
It’s also a term that we come across when talking to customers at business events around the UK, but what exactly does it mean?
My first memory of the term was from the cartoon The Wacky Races and Professor Pat Pending in his 'Convert-A-Car', but since joining the IPO it has become much more significant.
Patent pending is the term used to describe a patent application that has been filed, but where a patent has not yet been granted. Patent pending indicates that the inventor is pursuing protection. But the scope of protection, or whether a patent will even issue, is not guaranteed
Marking an invention “patent pending” puts the public on notice that the underlying invention may be protected and that copying could infringe.
Do your research before filing
Many people will ask us how to file an application for their new idea, but it is not something that should be entered into lightly. The first thing that should be considered before filing is novelty. Is the invention new? Just because you haven’t seen one or it’s not in the Argos catalogue doesn’t mean that it hasn’t been done before.
A search through past patents will give you an indication whether it has been done before. Visiting one of the Pat Libs around the UK will be a good starting point to start your patent journey. Here they can show you how to perform a search using on-line patent tools.
If then you are happy that you still have something patentable, the next process is to do some market research. Who will buy it? What are the manufacturing costs? What are the alternatives? Do you have a business plan?
Market
So, it’s new and there is a market for it. The next step is to try and protect it. This is where your 'patent pending' or 'patent applied for' comes into play. By filing a provisional patent application with us at the IPO, this establishes a priority date for your invention. It gives the applicant a fixed period of 12 months in which you can research the invention further and make those important decisions whether you wish to pursue the application to grant.
Because a provisional application can be filed easily, there is an assumption that it is something that can be prepared quickly, cheaply with little thought, or care for the content. This is far from the truth! If the application is going to act as the basis for priority for further UK or international filings, it will need to include all the relevant information to support the claims made in any subsequent application.
Thus an initial application will need to include a complete disclosure of the invention in sufficient detail to enable a skilled person in the relevant field of technology to make or put the invention into effect.
Seek legal help
Many assume that, because they are proficient in their area of technology, that drafting this document will be simple. In most instances this is not the case. We strongly advise you to seek legal advice before applying for a patent as it can be a complex and costly process. A patent specification is a legal document and requires specialist skills to draft properly. Your chances of obtaining a useful patent are much greater if you use an IP professional. A good starting point for advice is the Chartered Institute of Patent Attorneys or The Law Society.
Most people would not buy a home without professional help, and yet getting a patent is more difficult than that. If you get your patent application wrong at the start, it can be impossible to correct an error, resulting in a lost opportunity to protect your invention. This may mean that your application cannot be granted. It could also mean that your granted patent is less commercially valuable than it might have been.
Do not skimp on your initial patent application. It should be prepared with skill and drafted in a fashion that gives adequate protection for your invention.
[Featured photo: Wacky Racers at Goodwood Festival of Speed by Paul Williams on Flickr. Used under Creative Commons]
To keep in touch, sign up to email updates from this blog, or follow us on Twitter.
50 comments
Comment by Gordon posted on
Hello,
My new machine requires hundreds of pages of computer code to run the algorithm that enables the machine to produce the end product.
To apply for a UK patent I have a few questions
Option #1 Can I describe the inner workings of the Machine but Not include the computer code that makes the machine function? Do I need to describe the end product?
Option #2 Can I patent only the end product by describing the end product and its novel functions and applications but Not describe the machine and computer code that makes the product?
Thanks Gordon
Comment by Paula Davy posted on
Hi Gordon
A patent application must describe the invention in a way that allows others to see how it works and how it could be made.
If you were to file a patent application for your invention (and you may want to think about whether this is the best option for you) you will need to ensure that your application describes the actual thing you have invented. Whether it is a machine or an end product (or both) you need to describe your machine in sufficient detail so that all its essential features are present and others can see how it works and how it could be made. It is unusual for a patent application to need to include full computer program listings to satisfy these requirements although it may be necessary for some inventions. Patent applications in this field do however sometimes include short exerts of code or pseudo-code to help to describe the invention.
You should also be aware that the law excludes certain things from being patentable inventions. These include mathematical methods and programs for computers, but this does not mean that it is not possible to get patents for inventions that make use of these things. What is important is that the invention makes some sort of technical contribution.
These questions, and the process of obtaining a granted patent, can be complex and costly. I would recommend talking to a patent attorney who is a professional expert in patents and can help you with these questions and also help you through the process. A list of patent attorneys is available from the Chartered Institute of Patent Attorneys (CIPA) at http://www.cipa.org.uk/.
Further information on patents and the process for applying for patents is available on the IPO’s website at https://www.gov.uk/topic/intellectual-property/patents.
Many thanks
Paula
Comment by Magdalena posted on
Hello ,
I want to apply for patent pending in UK but I’m not sure if that’s enough to protect my idea from steeling from other countries like USA , China ? Do I need to apply for separate patents ?
Thank you
Comment by Kirsty Edwards posted on
Hello Magdalena,
Thank you for your question.
A patent only protects your invention in the country where the patent is registered.
For protection overseas, you can:
- file a single application under the Patent Cooperation Treaty (PCT) for protection in more than 140 countries
- file a single application with the European Patent Office (EPO) for protection in more than 30 countries in Europe
- apply separately to the patent office of each country where you want a patent
If you have any further questions you can also call our Information Centre on 0300 300 2000.
Thanks,
Kirsty
Comment by Paul posted on
Hi Henry,
I have an international patent pending with a PCT number. At this point when discussing with a potential licensee do I need an NDA? All the big companies are saying they don't sign NDAs.My feel is that they are scared of any legal tanglement but they do want to see and talk about the concept and design as part of the discussion. For me it sounds obvious but I want to make sure that I've protected myself properly.
Comment by Kirsty Edwards posted on
Hi Paul,
It's always recommended to use an NDA when talking to potential investors or licensees. https://www.gov.uk/government/publications/non-disclosure-agreements
I recommend in this instance seeking legal advice if you haven't already. You can find a patent attorney on the following link and many offer 30 minutes free advice initially: http://www.cipa.org.uk/need-advice/the-register-of-patent-attorneys/
Any further information please do not hesitate to call our Information Centre on 0300 300 2000.
Thanks,
Kirsty
IPO External Comms
Comment by Sukhraj Singh posted on
What is the percentage ratio of inventors applying for patents versus professional institutions such as IP attorney firms please?
Comment by Kirsty Edwards posted on
Hi Sukhraj,
Our assessments of last year tell us it was in the region of 15% private applicants and 85% professionals.
It is always recommended to use a patent attorney as your chances of obtaining a patent are significantly higher. For more information, please see: https://www.gov.uk/guidance/why-you-should-use-an-ip-attorney
Thanks,
Kirsty
Comment by Emiliano posted on
Hi Paula,
I would like to start with the process of filing a patent application. However, for now, I am only interested in a provisional patent which I understand in the UK it is called a patent pending process. That is right?
How can I begin the process? I need to fill a special form or it is the same file of a standard patent process. That is mean that automatically the system assigns a "pending patent" name after to submit the application.
Finally, can the pending patent appears with one inventor and two ownership? Like a standard patent?
Many tanks for your help
Comment by Henry Behmann posted on
Hello Paula,
Is there a formal requirement in a provisional application for specific claims? If so, can these claims be included at a later (before 12 month) date?
Thank you and cheers, Henry
Comment by Paula Davy posted on
Hi Henry
The claims should define your invention by setting out its distinctive technical features. The claims do not need to be filed with your application, but they must be filed within 12 months of your filing date (where no claim to priority is made).
I hope this is helpful.
Thanks
Paula
Comment by Tony posted on
For the past 25 years since the "Patent Application" stage was FREE,
I have applied for some 140 inventions, although non brought me any
fortune, and now, out of the blue, the Patent Office is going to charge
for any patent application from the 6th of April 2018, Does this mean
that I will have to pay the back payments of £30 each for all my 140
patents applications in the past 25 years? I understood that if an
application for patent is not followed up for search after it's
free duration of 12 months, it will be automatically cancelled and
taken off the record, which I have been doing due to lack of money and
know how. Can you please inform me about this?
Thanks Tony
Comment by Paula Davy posted on
Hi Tony
Although our patent fees are changing from the 6th April 2018 there will continue to be no charge for filing a patent application at the IPO. The application fee you refer to in your comment has been in place for many years and is only required if you would like the Office to carry out a preliminary examination on your application.
On the 6th April this application fee, along with a number of others, will increase but no fee is required for simply filing an application with us. The option of paying both the application fee and search fee at a later date remains if you wish to proceed with any of your applications within 12 months of them being filed.
From the 6th April our application fee will increase from £30 to £90 (or from £20 to £60 if filed electronically). Also, if you choose not to pay your application fee when you file your application a 25% surcharge will be added to the fee if it is paid at a later date, i.e. a £90 application fee paid at the time of filing will become a £112.50 application fee if paid at a later date. Therefore if you plan on continuing with any of your existing applications you may wish to consider paying your application fee (and any search fee) before these increases take place. However, if you do not intend to continue with any of your existing applications then there is no requirement for you to make any 'back payments' to the Office.
I hope this response has been helpful.
Many thanks,
Paula
Comment by Hannah posted on
Hello. I've filed a patent application and want to start the process of contacting potential licencees. Is this a safe way to proceed even if the patent hasn't yet been granted? I want to contact potential licensees but should I wait for it to be granted?
Comment by Paula Davy posted on
Hi Hannah
Although you can seek licensees, it very much depends on how far you are along the process of both patenting and developing the invention. Many licensees would expect a prototype or to see the patent search results. Have a go at our licensing health check which may give you some more ideas: https://www.ipo.gov.uk/iphealthcheck.htm
Thanks
Paula
Comment by Ciaran McDonald posted on
If you infringe a patent pending in error, but cease when notified by the patent applicant, are you liable for any damages?
Comment by Paula Davy posted on
Hi Ciaran
Unfortunately this is not a yes or no answer - each case will be different depending on the circumstances. You would be best advised to seek professional help. A list of attorneys can be found on the CIPA website: http://www.cipa.org.uk/
Thanks
Paula
Comment by Paul posted on
Hi, I have filled a patent application in the UK. If I want to license my idea is it restricted to the UK? or can I now license all the future international rights? (subject to it being granted) also, is it safe for me to pursue licensing my invention to other companies in Europe or internationally prior to submitting an international patent? My understanding is that I have my date of submission in the UK and that as long as I submit my international applications within a year I hold the rights from this date. Is this correct?
Comment by Paula Davy posted on
Hi Paul
Yes, by filing in the UK you have established the priority to file internationally. You must file in the countries you wish your patent to cover within 12 months of your earliest date (priority or application) either by filing in the country, nationally, or using one of the international systems (EPO or PCT). See the following link for details: https://www.gov.uk/government/publications/protecting-your-uk-intellectual-property-abroad/protecting-your-patent-abroad
If you are thinking of licencing you might also find it useful to do our licencing health check, https://www.ipo.gov.uk/iphealthcheck.htm
Thanks
Gary
Comment by Darren Pallatina posted on
Hi, I have filed a patent application and sent the last form away several weeks ago. I have checked the status of my application online and it just says "pending"
will I be informed when the actual "patent pending" status is added or is "pending" already stating that it is patent pending?
Comment by Paula Davy posted on
Hi Darren.
Yes, your application is 'patent pending'. You should here back from us in a month or so. Should you need an update, you can call our information centre on 0300 300 2000 or email information@ipo.gov.uk.
Comment by Martin Andrew posted on
Hi, I have patent pending on a unique device for beds which has a huge potential market for the big guns. I want to do a trade show to garner opinion and identify interest but am concerned the big bedding companies might steal the idea and sell product until I get my patent. Do I have any protection against this or should I just keep very quite until I get my patent. What recourse do. Have against that sort of infringement?
Comment by Gary Townley posted on
Hi Martin, By filing a patent application you have a patent pending which puts people on alert that a patent may be granted on the invention. The patent protection if granted will run for 20 years from the application or the priority date. If you wish to show the invention before the patent is granted you may do so.
If the invention is infringed while the application is still being processed you can ask for the application to be accelerated.
Comment by Arthur posted on
Hi, I have been offered the chance to licence a 'patent pending' invention but I am unsure of the patent's likelihood to ever be granted and therefore, I am concerned about people copying what I am licensing. As far as I can tell the product has been on sale since some years before the patent had been applied for. It's my understanding that a patent could never be granted on an invention that is already in the public domain. Am I right or am I missing something?
Comment by Gary Townley posted on
Hi Arthur, you are correct an invention must be new when it is filed, any prior disclosure may invalidate a patent. What you should do is have a look at the patent application to see exactly what they are claiming as the invention, you might find that it is an improvement to the original product which is often the case.
Before entering into an agreement it would be best to seek legal advice.
Cheers
Gary
Comment by Arthur posted on
Thanks Gary, it was a newly designed product back then when it was first made available and the patent is simply for that product design. I will seek further help but it looks like it may be a worthless application.
One last question if I may; is it quite feasible then, that almost any invention can have 'patent pending' status even though it is extremely likely that a patent will never be granted?
Thanks again.
Comment by Gary Townley posted on
Hi Arthur, we receive around 23000 applications per year for patents, of which around 8000 will be granted.
All these can be marked patent pending until they are withdrawn, refused or granted.
Regards
Gary
Comment by Tammy posted on
Hi, I have a patent pending in the USA and would like to start selling my product in Europe. Can I transfer this patent pending to European countries or do I need to file in each country?
Comment by Gary Townley posted on
Hi Tammy, firstly let me apologise for the lateness of replying, it appears the notification system did not work and we only came across your question when replying to a later enquiry.
If you are only interested in Europe you can file a European patent at the EPO. If you are within twelve months of your earliest date in the USA then you can claim priority from your USA filing. If you have missed this deadline then you still may be able to file at the EPO providing the invention has not been made public, or published by the USA office.
If you want further afield than Europe then you would file under the pct system which covers 148 countries, but the same publication and priority rules apply.
We have a section on our website coving taking your ip abroad.
Once again apologies for not replying sooner.
Regards
Gary
Comment by Antony Ryan posted on
Hi. I've been issued with a filing receipt 1713306.7 I've not yet paid application fee or forfiled 9A. Can I still state Patent Pending to licensees under an NDA.
Also, do I need to quote this number where I state patent pending?
Many thanks.
Comment by Kirsty Edwards posted on
Hi Antony,
I've contacted a member of patents here and should be back to you soon. My understanding is that once you have a filing date and app number it's potentially patent pending. But I'd rather check with a colleague to provide a better answer. However if you require a sooner response you could call our information centre on 0300 300 2000.
Thanks,
Kirsty
Comment by Antony Ryan posted on
Many thanks Kirsty - look forward to hearing back from your colleague 🙂
Comment by Kirsty Edwards posted on
Hi Antony,
Patent pending can be used to describe a patent application that has been filed, but where a patent has not yet been granted.
It indicates the applicant/inventor is pursuing protection, but the scope of protection, or whether a patent will even be granted, is not guaranteed. Marking an invention “patent pending” puts the public on notice that the underlying invention may be protected and that copying could infringe. You can include the application number, but as the application will not be open to public inspection until it's published, there will be little information associated with the application number.
I hope this helps.
Thanks,
Kirsty
Comment by Antony Ryan posted on
It does Kirsty. Thanks so much!
Comment by Sharon posted on
If a patent application has been marked published then not in force by more than a year, can the potential patentee still claim patent pending?
Comment by Paula Davy posted on
Hi Sharon
Falsely representing that a patent has been applied for a product, when any such application has been refused/withdrawn, may lead to a conviction and a fine in accordance with S110, 111 of the patents act.
Any products marked as such must be removed within a reasonable period.
It is now possible to use a web page to indicate that a product has been patented. See: https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/325027/webmarking-_factsheet.pdf.
I hope this is helpful.
Paula
Comment by Sharon posted on
Thank you Paula. What would be considered a reasonable time? And i'm assuming it is not a good practice to message someone to say and i'm quoting here ......
"Hi. I have a patent application in final stages of this design. Please remove or I will have to report for infringement of my intellectual property rights
Many thanks"
After checking with IPsum, this product was Terminated before grant, more than a year ago.
My product is similar, but certainly not identical. I had no notion or knowledge of this product. I was simply producing something my grandfather used to do ... but on a more professional basis.
Can they claim intellectual rights on a product that has no patent? and should they still be marking as "Patent Pending" on their website and product?
Sorry for all the questions Paula, I just don't appreciate being bullied.
Comment by Paula Davy posted on
Hi Sharon
I would advise you to seek some professional legal advice. Most patent attorneys will give you a free consultation where you can raise these issues.
Although the application has been withdrawn, it may have been used as a priority for a later filed application, or they may have refiled adding new patentable features. There may also be copyright or unregistered design rights.
You can find a patent attorney in your area at the CIPA website: http://www.cipa.org.uk/find-a-patent-attorney/
Thanks, Paula
Comment by Chris posted on
Hi, can you tell me if there are any 'free' sittings with patent attorneys just to get some advice. Based in Liverpool.
Comment by Gary Townley posted on
Hi Chris,
The Liverpool patent clinics are held at the central library on the first Tuesday of each month, details can be found here http://www.cipa.org.uk/need-advice/ip-clinics/ booking is required.
Gary
Comment by Chris posted on
Hi, I have a patent pending and now that the 12 months are nearly up need to know what to do next? or where i can find this information.
Thanks
Comment by Gary Townley posted on
Hi Chris,
It very much depends on what you have already filed. If you have filed the claims and requested the search, then the decision you have is whether you wish to file abroad. If you have not yet filed the claims or request for search (Form 9A) then this needs to be done before the anniversary. A time line of the process can be found here https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/577758/Patents-Grant-Timeline.pdf
If you are not sure give our information team a ring on 0300 300 2000 (have your application number ready) or alternatively seek professional advice.
Comment by Pardeep Arora posted on
I would like to develop an app for NHS patients. Do I need a patent or a copyright will suffice?
Comment by Gary Townley posted on
Hi Pradeep,
Yes, usually apps are protected automatically by copyright, so the coding, wording, images etc. Some software can be patented but there has to be a technical effect.
Remember, whoever writes the software will be the first owner, so if you are not writing it yourself, make sure you address it in the contract.
Also don't forget trade marks, the name you call the app could be registered as a trade mark, and check the register to make sure you are not infringing.
Comment by Nik posted on
Hi! I have an idea that i would like to check if it's already been patented before,licensed or if it is existing already. How do i do that? Where do i need to search? Thank you
Comment by Gary Townley posted on
Hi Nik,
Many thanks for reading and commenting. The best place to start your search is on espacenet https://worldwide.espacenet.com/advancedSearch?locale=en_EP
You can search here on the subject matter, so "Plastic and Bicycles", this will bring you up all patents with these words in the title. You can then narrow it down using the classifications.
If you are near any of the Patents Libraries they can also show you how to search.https://www.gov.uk/government/publications/uk-patlib-network
Comment by G Branchesi posted on
the link "Chartered Institute of Patent Attorneys" not working; clicking it, it produces an error 404 - PAGE NOT FOUND.....
although I found it in other ways..
Comment by Kirsty Edwards posted on
It should work now. Thanks very much for informing us.
Comment by jamescole posted on
I want to start a newspaper online and need to register the name and the content. Need to do it internationally. However, not a clue how to do it... I've already got a domain, but the title would be slightly different from the domain name..
jamescole http://photoshopcs4serial.blogspot.com
Comment by Paula Davy posted on
Hi James. If you give our information centre a call on 0300 300 2000 we can help you. Alternatively, you can email them at information@ipo.gov.uk