Mark Your Patented and Patent-Pending Inventions

Once you, the inventor, have filed a patent application, don’t just twiddle your thumbs for 3-5 years to see if your patent is granted. Start taking advantage of that “patent pending” status now, particularly if you already have a product you are selling, or want to sell, that embodies the invention.

So, what do you do?

Mark the product or its packaging with “patent pending” in a prominent way to provide notice that your product, and invention, are protected.

Why spend the money to change the packaging or product before you know whether you’ll get the patent? Because life does not stop, and you want to make money off the invention while protecting it from others.

Licensing and Investment 

“Patent Pending” by Zepfanman.com from Flickr (Creative Commons License)

You want potential investors and purchasers to be aware, if they discover your product in the marketplace, that the invention is patent pending. Most savvy companies and investors will not be interested in talking with you otherwise. And the inquiry goes both ways:  once the patent application is filed, an inventor can better approach companies – and vice versa – about investing or licensing the patent-pending invention (usually at a discounted royalty rate until the patent is granted). Some companies even scour pending applications for inventions of interest, especially those with a limited shelf life or those so qualitatively new or general that they will form the basis of thousands of products (for example, the initial touchscreen technology).

In either case, the time to license and market is now. Having “patent pending” on the product that embodies the invention, or its packaging, shows that you are being proactive in protecting your invention, gets the word out to potential investors or purchasers that a patent is pending, and helps present you as a good investment.

Protection against Competitors 

As an inventor and businessperson, you also declare to the world – particularly competitors, who may be tempted to develop a similar product – that you have filed for patent protection. The “patent pending” notice tells the public that your product may obtain patent protection, meaning that once a patent issues you will be able to sue a potential infringer for patent infringement. This can cause competitors to be more careful about copying your product, or to decide against entering the marketplace.

Post-Issuance 

“Patented” by Scott Robinson from Flickr (Creative Commons License)

Marking your products put the competition on notice of potential future infringement of your patent once the USPTO issues it. Once this occurs, you must update the “patent pending” notice to secure your rights to damages. Specifically, until “the manufactured article is marked ‘patented’ there is no actual notice to the public that the article is protected by the patent laws.”*

You can do this by changing “patent pending” to “patent” plus the patent number on the patented articles or showing that the suspected infringer was notified of the infringement and continued to violate your patent rights. Post-issuance marking can be:

  1. On the product;
  2. On a sticker affixed to the product;
  3. On the packaging; or
  4. Using the internet.

The internet option allows patented articles to be marked “virtually.” The product or its packaging must contain the word “patent” or “pat.” along with a website address where someone can find the patent number. Virtual marking provides certain advantages, including being able easily update and identify later issued patents without having to physically re-mark your products.

If you don’t mark your products after obtaining a patent, you may still recover damages if the infringer had “actual knowledge” of both the patent and the accusation of infringement.  “Patent pending” notifications only tell the public about a potential violation; at best, they may be used in conjunction with other evidence of “actual knowledge” of infringement. Thus, once you get your patent, it’s often best to send alleged infringers a cease and desist letter, or file and serve a lawsuit.

If you need any help with your patents or other intellectual property, please send us a message. We have lawyers licensed in Arizona, Connecticut, and New York, and we can handle federal intellectual property matters in any U.S. state and assist with international matters. We would be happy to discuss your patent ideas and the expected fees based on your specific situation. For even more information, be sure to connect with us on Facebook.

Post written by patent attorney Wendy Akbar and edited by social media attorney Ruth Carter.

* You can read more about this and similar patent cases at Steinthal v. Arlington Sample Book. Col, 94 F.2d 748, 749 (3rd Cir. 1938); see also Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556, 1562 (Fed. Cir. 1994); MacPike v. American Honda Motor Co. Inc., 1993 U.S. Dist. LEXIS 18970, 29 U.S.P.Q.2d 1526, 1530 (N.D. Fla. 1993).

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