What happens when a product or process is erroneously labeled “patent pending” and it is not?  This occurs more often than one may think.  Not surprisingly, it is illegal to intentional mislabel a product as “patent pending” if a patent has not been filed, if the mislabeling is done with the purpose to deceive the public.  The penalty is a maximum of $500.00 per mislabeling act so one can easily envision this fine adding up quickly if you ship a lot of products which are mislabeled.  Ship 10,000 mislabeled products and you could be looking at a maximum of a $ 5,000,000 fine.

What do you do if you inadvertently discover that you labeled something as “patent pending” and, in fact, no patent has been filed?  Again, this happens more often then you may imagine.  Serendipitously, this issue just came up today.  Consider the following, typically fact pattern.  You intend to file a patent application before you roll out new software.  As a result, within the software start-up screen is the label, “patent pending.”  However, right before you roll out the new software, the world economy falls apart, and you are short of capital resources, so you decide to release the software without first filing a patent application.  Unfortunately, you fail to realize that the software includes the label “patent pending.”

Based on the facts as outlined above, there was no intent to deceive the public.  Nevertheless, you have mislabeled the product as “patent pending” and it is not.  Rather than pulling all product from the store shelves, one simple solution would be to file a patent application is relatively short order, after you discover the inadvertent mislabeling.  (See future posts regarding the timing of when to file a patent application.)  Please note, failure to remedy the oversight within a reasonably time after it is discovered could be used as evidence that you did intend to deceive. Should you discover that you have mislabeled a product or process, it is recommended that you consult a patent attorney so that he or she can review the specific facts of you case and advise you accordingly.

Now that you know what “patent pending” means (i.e. a patent application is pending), a more complicated, and not so straightforward matter is to know what, exactly, is being patented.  In the case of software, is it the entire program, or just a small, function or individual application within the complete software package.

Further complicating matters, the country where the patent application is pending may also be unclear.  Therefore, one cannot simply consult a central patent application database to discern what is being patented.  Typically, one needs to conduct a patent search using various different databases, most often done by a trained professional such as a search agent, with the results reviewed by a patent attorney. Therefore, it is recommended that you consult your friendly neighborhood patent attorney.

Look closely at a product, the package of a piece of software or even in the small print at the bottom of a website, and you may see two small words, “patent pending.” But what exactly does this mean? In the case of a website, does this mean a patent will soon issue, is the whole website to be patented, or only a small aspect, perhaps just a small applet? And, when I can I put “patent pending” on my product or software.

“Patent Pending” means that an application for a patent application has been submitted to a national patent office, e.g. the US Patent Office. At least the applicant believes that the patent application covers a new, non-obvious and useful invention, e.g. a device or process. The patent application can be a provisional or non-provisional application filed in the United States or an international PCT application.  Due to an involved examination process, there is no guarantee that a pending patent application will ever issue as a patent. Further, provisional patent applications expire after one year, so if another provisional or a non-provisional patent covering the same invention is not filed within that year, the subject matter or invention of the provisional ceases to be considered “patent pending.”

See future posts for more on the distinction between provisional, non-provisional and international patent application in subsequent posts.