Patent law is rife with terminology, and not all of it is intuitive. That being said, when you are talking to a patent attorney, a potential investor, or anyone else about the patent application process, keeping these terms straight will expedite your conversation and help you to properly communicate where you are in the patent process.
1. Patent Pending
Most inventors, before disclosing their product to investors or offering their product for sale on the market, want to mark that product “Patent Pending.” Many inventors, however, don’t have a clear idea of what “Patent Pending” actually means.
An invention is said to be “Patent Pending” when a patent application has been filed with the USPTO. An inventor, manufacturer, or distributor should never use the “Patent Pending” designation unless they have a filing receipt from the USPTO to back it up.
The following activities are not sufficient to declare your product “Patent Pending”:
- You intend to file a patent application, but haven’t filed it yet – NOT PENDING
- You have paid a patent attorney to prepare a patent application, but she has not filed it yet – NOT PENDING
- You have written up your invention and mailed it to yourself – NOT PENDING
It is never a good idea to mark your products, slide shows, or marketing materials “Patent Pending” unless you or your attorney has actually filed a patent application with the USPTO.
2. Provisional Patent Application
A Provisional Patent Application is an interim patent application that provides the inventor with (1) constructive reduction to practice and (2) proof of an invention date. The Provisional Patent Application is only a place-holder. It is not examined by the office and a patent will not issue from a Provisional Patent Application.
In Patent terminology, an invention consists of two steps: conception + reduction to practice.
“Conception” means that you have a full and complete idea for the invention and how it will be implemented.
“Reduction to practice” means that you have either (1) made a prototype of your invention or (2) described your invention with enough detail that someone else could make a prototype of your invention.
In Patent law, as in life, evidence speaks louder than words. If your invention pertains to something that you do not have the resources to make, you may establish evidence of your invention by filing with the USPTO your detailed description. This is referred to as “constructive reduction to practice.”
If you have filed with the USPTO a Provisional Patent Application, you may mark your products, slide shows, and marketing materials with “Patent Pending.” When you discuss your Provisional Patent Application, you should state “I have a Provisional Patent Application on file with the USPTO.”
You should not state “I have a Provisional Patent” or “I have a patent.” You do not have a patent until the application is examined and a patent has officially issued. If you use improper or misleading terms, you may lose credibility with potential investors and customers.
3. Non-Provisional Patent Application
A Non-Provisional Patent Application is a patent application filed with the USPTO and placed in queue for Examination by a USPTO Examiner. The Non-Provisional Patent Application must have claims, a drawing, and an oath signed by the inventor stating that she is the first inventor. The USPTO also charges several fees for the Non-Provisional Patent Application such as an application fee, search fee, and an examination fee.
If you or your attorney has filed a Non-Provisional Patent Application, you can mark your invention with “Patent Pending.” Once the Non-Provisional Patent Application is filed, you have started the process that will, hopefully, lead to the grant of a Patent for your invention.
4. Prior Art
Prior Art refers to all previous developments that are used by the USPTO and by courts to decide whether your invention is sufficiently novel and non-obvious to qualify for a Patent. Many inventors will refer to any website, article or patent that is related to their invention as “Prior Art.” This is dangerous!
“Prior Art” has a very specific, fact intensive, legal definition and refers to very specific references, for example:
- Articles describing the invention and also pre-dating the inventor’s date of conception
- Articles describing the invention or products on the market more than one year prior to the filing date
- Patents issued prior to the inventor’s conception
Often, an inventor will come to me with a list of references located in a search – they may list these references in a slide show or a paper they intend to publish. The inventor will often prominently mark these references “Prior Art.” In fact, the references may have nothing to do with the invention – for example, the references may only demonstrate the many ways that others have tried and failed to solve the problem that the inventor has addressed with her invention.
“Prior Art” is a legal conclusion that should be made by an attorney, a judge, or the USPTO. An inventor runs the danger of making an “admission” that a reference is Prior Art – when in fact it is not. This gives Examiners and future infringers ammo against your patent to destroy and invalidate it.
Prior Art is a term that should be removed from the inventor’s vocabulary. Instead – refer to the references that you find in your searches as what they are: References.
“Obvious” is another term that I hear inventors use about their inventions. For example, “no one has ever done this before, but when I tell people about it they say ‘I should have thought of that, it is so obvious.’” Your invention is not Obvious until the USPTO (if you stop there) or a federal court rules that it is Obvious. ”Obviousness” is another term that has very specific legal meaning and you should never use it when talking about your invention. If someone else uses that term about your invention, you should correct them immediately. If your invention was Obvious, why hasn’t it been done? Using this term about your invention, again, provides ammo to the Examiner and to future infringers.
If you keep these terms straight, you will be on your way to better communication about your invention. You may also avoid some of the legal pitfalls that threaten inventors:
- Using “Patent Pending” when you don’t have a patent application on file can open you to liability for false marking.
- Using “Prior Art” and “Obvious” about your invention can serve as an admission that your infringers and their attorneys will rely on in litigation to destroy your patent rights.
- Using “Provisional Patent” when you mean “Provisional Patent Application” and not knowing when to use “Provisional” versus “Non-Provisional” might confuse an attorney or investor and might lead to higher legal bills and inappropriate advice.
When you talk about your invention – Keep Your Story Straight.
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