https://ipo.blog.gov.uk/2015/06/05/patent-pending/

Patent Pending

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]

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31 comments

  1. 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?

    Reply
    • Replies to Darren Pallatina>

      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.

      Reply
  2. 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?

    Reply
    • Replies to Martin Andrew>

      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.

      Reply
  3. 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?

    Reply
    • Replies to Arthur>

      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

      Reply
      • Replies to Gary Townley>

        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.

        Reply
    • Replies to Arthur>

      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

      Reply
  4. 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?

    Reply
    • Replies to Tammy>

      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

      Reply
  5. 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.

    Reply
    • Replies to Antony Ryan>

      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

      Reply
      • Replies to Kirsty Edwards>

        Comment by Antony Ryan posted on

        Many thanks Kirsty - look forward to hearing back from your colleague 🙂

        Reply
        • Replies to Antony Ryan>

          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

          Reply
          • Replies to Kirsty Edwards>

            Comment by Antony Ryan posted on

            It does Kirsty. Thanks so much!

  6. 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?

    Reply
    • Replies to Sharon>

      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

      Reply
      • Replies to Paula Davy>

        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.

        Reply
        • Replies to Sharon>

          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

          Reply
  7. 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.

    Reply
  8. 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

    Reply
    • Replies to Chris>

      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.

      Reply
  9. 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?

    Reply
    • Replies to Pardeep Arora>

      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.

      Reply
  10. 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

    Reply
  11. 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..

    Reply
  12. 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

    Reply

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