The Power of “Patent Pending”

by Kathleen Kuznicki, Esq.

If you or your business is developingLocks PicJumbo new products or processes, you should consider being “patent pending” before you trying to exploit your inventive idea. When a patent application is filed in the United States Patent and Trademark Office (USPTO), and is awaiting prosecution and (hopefully!) eventual issuance, any actual or any potential product/process encompassed in that patent application can be labeled or described as “patent pending”.  Having a patent application pending gives an applicant some protections and advantages, and mitigates substantial risk.  An applicant for a patent application can be the inventor or a group of joint inventors.  Applicants for inventions can now also be a person or a legally created organization (a business for example), (1) to whom the inventor(s) has assigned the invention; (2) to whom the inventor(s) is under an obligation to assign the invention; or (3) who otherwise shows sufficient proprietary interest in the invention.

As an applicant, an issued patent gives you the exclusive right to make, use, or sell the claimed invention. However, prior to issuance, if you make and sell the product or use the process described and/or claimed in the patent application, a “patent pending” notification will put competitors on alert that copying could result in trouble down the line. If the patent application eventually issues, you can pursue those who make, use, or sell the claimed product or process without your permission for infringement.  And you could be entitled to reasonable royalties.

If you are truly the first to file a patent application on an invention, the priority of your application can block competitors from receiving an issued patent on obviously similar inventions.  If you sell or publicly disclose your invention before filing a patent application, you may lose your patent rights in the U.S. and will lose your patent rights in foreign countries.   Having a patent application pending before selling the invention or otherwise disclosing the invention to the public is your safest course.

Also, having a patent application pending before meeting with potential licensees or potential investors lessens the danger that your inventive idea will be stolen and utilized by them, as these entities would be putting themselves at risk for infringement.

Having a patent application pending can benefit you in other ways. Writing about the invention in a patent application, forces you to think about your invention in a profound way.  It requires that you articulate what problem you are solving, the benefits of your invention, and what makes your invention stand out from all the previous solutions to the problem. In a way, writing a patent application is a first step to writing a sales pitch and determining commercialization potential. It forces you to answer the questions: does the invention truly satisfy a critical need, and does it have market value?

Writing an application and incorporating drawings also forces you to contemplate and describe all possible configurations and to focus on what structural details distinguish your invention from all other previous inventions. Having a clear understanding of your invention is critical for you to explain the value of your invention to investors, licensees or consumers. And for investors or licensees to take action, “patent pending” is vital. Both will only see economic potential if there is an exclusive right to exploit the invention; effectively blocking competitors.  This exclusive right mitigates risk to their financial outlays; whether they are capital investments or licensing fees.  Having a strong and well-reasoned pending patent application can be the difference between you developing valuable strategic relationships to exploit your invention, or having your inventive ideas go unexploited.

For more information on this topic, Kathleen Kuznicki can be reached at kkuznicki@lynchlaw-group.com.
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