SHOULD I MARK MY PRODUCT WITH ‘PATENT PENDING’?
You have developed a product which encompasses a new innovation. You have taken the first steps to seek protection for the innovation by filing a patent application and the product is about to be launched. You might be wondering, “Should I mark my product with the phrase ‘Patent Pending’?”.
Well in the latest blog from Scintilla we will discuss the benefits and risks of marking products with ‘Patent Pending’ and offer advice on what to do if you are in this situation!
Typically, the phrase ‘Patent Pending’ indicates that a patent application has been filed at an intellectual property office but has not yet been granted, hence the patent is pending. This pending status can last for months or even years, depending on the complexity of the patent examination process.
WHAT ARE THE BENEFITS OF MAKING A PRODUCT WITH ‘PATENT PENDING’?
Firstly, putting the phrase ‘Patent Pending’ on your product can discourage competitors and third parties from copying your product because the phrase signals that legal protection may soon be in place. Some companies may want to avoid investing money and time into the development and marketing of a product that could potentially infringe upon a future granted patent.
Second, a ‘Patent Pending’ label could enhance your product’s credibility and attractiveness in the eyes of consumers as well as investors. Both investors and customers can often view technology which is patented as more innovative and valuable. Therefore, using this phrase can give your business a competitive advantage in the marketplace.
A further benefit is that the patent pending status can offer some legal protection. Whilst you cannot usually[1] enforce a patent until it is granted, if a third party infringes your (published) pending patent application then they might face legal consequences after the patent is granted. You may be able to seek damages for infringement that occurred after the application was published, further securing your rights over your invention and hence your product.
If your patent has already been granted, the wording ‘Pat. No’, ‘Patented product’ or ‘Protected by Patent number’ can be used. In both cases, the patent number should be included in the product marking and the following guidelines should be followed.
MARKING REQUIREMENTS
When marking a product with ‘Patent Pending’ or a granted patent number, certain requirements must be met to ensure compliance with intellectual property laws. The marking should be affixed to the patented product in a manner that is easy to read and not concealed. If it is too impractical to mark the product directly (for example, the product is small), the patent information can instead be placed on the packaging, labelling, or container instead. In cases where the marking may subject to wear and tear due to handling and/or environmental exposure, the placement of the marking should be adjusted to ensure its longevity on the product. The marking should typically include the word ‘Patent’ or ‘Pat.’, followed by a list of the applicable patent numbers. Additionally, all products in a production batch should be marked in a consistent manner to avoid any legal ambiguities or enforcement issues.
VIRTUAL MARKING
In addition to physical marking, you can use virtual marking to meet patent marking requirements where the product is not a physical product, such as a software product or service, for example. Virtual marking involves displaying the relevant patent information on a publicly accessible website, instead of marking the product itself, for example by using a URL. To comply with virtual marking regulations, you should:
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Use a clear and accessible URL that links to a dedicated webpage listing the relevant patent numbers for the product.
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Ensure that the webpage is free and publicly available so that anyone can verify the patent information without restrictions.
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The URL must provide a clear connection between the product and its associated patents, avoiding any ambiguity about which patents apply to which products.
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Keep the webpage up to date to reflect changes in patent status, such as newly granted patents, expired patents, or additional filings.
Virtual marking is particularly beneficial for if you have multiple patents associated with a given product, as it simplifies updates and reduces the cost of re-marking physical products.
RISKS AND LEGAL CONSIDERATIONS
Whilst there are a number of benefits to marking your products with the phrase ‘Pat. No’ or ‘Patent Pending’, there are associated risks and legal considerations that must be taken into account before committing to marking your product.
Using ‘Patent Pending’ on a product when you haven’t actually filed a patent application could lead to fines or legal actions. Falsely claiming patent protection can be seen as deceptive or misleading under intellectual property laws. Claiming you have a granted patent when you patent is still in its application stage could also be seen as misleading. For example, in the US the fines are per each article that uses the misleading wording, so for volume manufacturing, the fines can add up to a significant amount. The United States government can sue for up to $500[2] amount for every falsely marked article. Furthermore, any person who has suffered a competitive injury due to false marking can sue in federal court for damages.
Whilst, as already discussed, ‘Patent Pending’ phrasing may warn or discourage competitors, it does not provide immediate legal protection. You will only be able to take action once the patent is granted. Therefore, if a third party copies your product whilst your patent is still pending, you may not have legal grounds to stop them right away. Once the patent is issued, you may have the right to claim damages from infringers dating back to the application’s publication date – provided that the scope of protection for the published application and the granted application is the same.
CONCLUSIONS
Marking your products with ‘Patent Pending’ may be an effective means to deter copycats and add value to your product. However, it is important to keep in mind that ‘patent pending’ status does not provide immediate legal protection for your product. Furthermore, the risks with marking your product with ‘Patent Pending’ incorrectly should be thoroughly considered.
Key things to keep in mind if you plan on marking your product with ‘Patent Pending’:
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Ensure You Have a Filed Application: Never use ‘Patent Pending’ unless you have a confirmed patent filing. Falsely marking a product can lead to legal consequences, so always verify the status of your application before marking any products or making any claims.
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You Must Use The Patent Number In Your Wording: For example you should use “Patent Pending GB123456.7 or “Protected by Patent Number US4,567,859”, depending upon whether you have a GB or US patent for example.
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Use the right wording in the right country. If for example if you have a GB patent but no US patent, then any US products should not be marked with the “patent pending” wording. So, you may want to think about strategy with regards to using this wording if your product is globally available and manufactured in a complex or costly way.
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Monitor and Enforce: Keep an eye on competitors and be prepared to enforce your rights once the patent has been granted. This includes regularly checking for similar products on the market, consulting with legal professionals about potential infringements, and taking swift action against unauthorized use of your innovation.
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Consult a Patent Attorney: If you’re unsure about the best approach, consulting a patent attorney can help you navigate this process effectively.
[1] There are very exceptional circumstances in which you might be able to, but it is not usually the norm.
[2] https://www.law.cornell.edu/uscode/text/35/292
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