Patent Basics

Sometimes an applicant for a patent application files their application and claims entitlement to an entity status discount. However, perhaps during the pendency of the application or even after issue of the patent, the applicant is acquired by another entity or grows such that they no longer qualify for the entity status discount.

The United States Patent and Trademark Office (USPTO) requires applicants to notify it when there is a change that results in the loss of entitlement ot an entity status.

When do I have to notify of a change in entity status?

The USPTO states “Notification of any change in status resulting in loss of entitlement to an entity status must be filed in a patent prior to paying, or at the time of paying, the earliest maintenance fee due after the date on which status as a small or micro entity is no longer appropriate.”

Additionally, the USPTO states “notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity is no longer appropriate.”

So, as soon as you have a change in entity status, notify your patent attorney so they can inform the USPTO prior to paying, or at the time of paying, any fee.

What if I accidentally paid the wrong fee before changing the entity status?

If you accidentally paid a fee under an entity status that should have been changed, you may owe a fee deficiency payment. If you can assert that your entity status was previously established in good faith, and that the entity status either was established in error, or the USPTO was not notified of the less of entitlement through error, the then you can pay a deficiency payment equal to the difference in what you should have paid and what you actually paid.

It is best to consult with your patent attorney to prepare and submit the correct forms to the USPTO.

Have you ever suddenly had a “genius” idea? Maybe you’re using something in your home and come up with a better way to do it. Or maybe you read about a new technology and thought “I can make that even better!” No matter how your ideas come to you, you’ve likely had that moment where you think you are the first to invent a new product or a new way of doing something.

You start imagining all the riches you’ll acquire when you sell your new invention. But, wait, you remember something the “sharks” are always asking on the hit NBC show Shark Tank.

Do you have a patent? Are you patent pending?

Uh oh, you better get some patent protection before you begin your journey to becoming the next Steve Jobs!

But an important question still remains: Is your new idea patentable?

What does it mean to be patentable?

An idea is patentable if it is patentable subject matter, new, non-obvious, useful, and enabled. These criteria come from the United States patent law under 35 U.S.C. Although these seem like simple criteria, there can be much more nuance to whether an idea satisfies each of these categories. Here is a more detailed explanation of what these mean.

Patentable Subject Matter

The idea must fall within one of the four statutory categories. The idea must be either a process, machine, manufacture, or composition of matter. This criteria ensures that one does not get a patent on an ineligible subject matter such as a law of nature, a mental process, or abstract ideas.

Novelty

The idea must be new. Something is new if it is not already known, used, or described in a prior patent, publication or public use before the filing date of your idea. This criteria is what those unfamiliar with the patent application process usually think of when they think about patents. Novelty ensures that you can only patent something that is new.

Non-Obviousness

The idea cannot be obvious to a person of ordinary skill in the relevant technology field at the time of the invention. Non-obviousness ensures that a patent is not granted for something that an ordinary person would think of. It ensures that there is an inventive step in the invention. As an example, it would be obvious to change the color of a coffee pot. Therefore, the United States Patent and Trademark Office (USPTO) would not grant a patent for a coffee pot that is only different because it has a different color.

Utility

The idea must have a specific, substantial, and credible use. It must work as described in the patent application and provide a practical benefit. An example of a non-useful invention would be using genetically modified mice as snake food because all mice can be used as snake food and using expensive mice for snake food is not a real world use.

Enablement

Your patent application must describe your idea clearly and completely so that a person of ordinary skill in the art can replicate or use it without undue experimentation. This means that you have to provide enough written description and details on how to make and use the invention. This criteria exists because in order to be granted a government monopoly on your idea, you must share with the public how the invention works and is made.

How will I know if my idea is patentable?

The only way to truly know if your idea is patentable is to file a non-provisional patent application with the USPTO and prosecute your application until it is allowed. If you are able to retain an experienced patent attorney, they can review your idea and give you a good estimate about whether your idea is patentable. But, even the most experienced patent attorney will not know whether your idea is patentable until it has gone through patent prosecution at the USPTO.

Can a patent search tell me if my idea is patentable?

A patent search cannot definitively tell you if your idea is patentable. However, it is a great tool to give you a better idea of what other inventions exist that could potentially render your idea not novel or obvious.

What is a patent search (aka prior art search)?

A patent search is a search done of existing patents, published patent applications, and other documentation such as technical jounrals to find relevant and related disclosures. It is sometimes called a prior art search. It involves searching databases all around the world to see if there is any prior art that matches your invention.

When you receive the results of your prior art search, you (and your patent attorney) can review the other publications to make a more informed decision of whether your idea is novel and non-obviousness. For example, maybe you think you’ve invented a new coffee machine that runs on solar power. However, when you perform your prior art search you may find that there are dozens of other patent applications for solar-powered coffee makers.

At this point, you will know that it may be a good idea to take some more time to refine your idea. Maybe your truly genius invention is not that the coffee maker is solar powered, but that it uses a new type of battery storage system for solar-powered coffee makers. That may be a better patent application to file because you may have a higher change of securing a grant and patent protection.

What is the best way to find out if my invention idea is patentable?

The best way to find out if your invention meets the criteria for being patentable is to file a patent application and get the patent process going. However, it is not the best idea to try getting a patent without a patent attorney. Getting a patent can be a complicated process and finding a patent attorney to help you navigate through the patent office will likely improve your odds of securing a patent.

Conclusion – only the USPTO will answer whether you’ve invented a patentable innovation

Whether your idea is patentable can only be determined through the application process at the USPTO. You cannot have the same idea as someone else in the world and it must not be obvious in light of the prior art. Most people never take the step to find out if their idea is deserving of protection. However, now you know that if you truly want to find the answer, you can file an application to protect your idea and discover its patentability.

Have you ever seen someone on tv say that their product is “patent pending”? You may have wondered what patent pending means. Does this mean they have a unique invention that is protected by a patent? Are they able to sue someone that copies the invention?

People often tout their patent pending status as if it is an endorsement of their invention. In reality, the designation of patent pending status may be different than what you think.

What is the meaning of patent pending?

Patent pending means that someone has filed a patent application with the United States Patent and Trademark Office (USPTO) and the application is still pending. When the application is pending, this means that the application has not been granted a patent.

An application will retain its patent pending status until the application either goes abandoned or issues as a patent.

Can I label my product with patent pending?

If you have a pending patent application filed with the patent office, you can mark your product as patent pending as long as the marking is not done in a deceptive manner. For example, it would be deceptive to file a patent application on a coffee mug and then mark the toaster oven you are selling as patent pending based on the coffee mug application.

Does patent pending give me legal protection?

No, not really. You cannot sue anyone for patent infringement based on the patent pending status of your application at the USPTO. However, the patent pending notice can warn potential competitors that a patent application has been filed and if the pending application becomes an issued patent, the patent rights can be backdated to the date the patent application was filed.

Additionally, the application that has been filed to begin the patent application process and give patent pending status may not have the same scope of protection as the patent that ultimately issues. You should contact a patent attorney for help with determining the legal protection of your ideas.

What is the difference between a granted patent and patent pending status?

A granted patent is an issued patent by the USPTO after a thorough examination process. An officially granted patent meets all the patentability criteria such as novelty, non-obviousness, utility, etc. A patent holder with an issued patent is granted exclusive rights to make, use, sell, or import the invention for a limited time period (typically 20 years from the filing date).

An issued patent will be given a patent number and if the patent is infringed, the patent holder may sue for patent infringement.

In contrast, patent pending status indicates an application has been filed, but the examination process is ongoing, and no patent has been issued. Patent pending status does not give applicant any enforceable legal rights. It is simply a warning to competitors that a patent may be granted in the future.

Here is a summary of the key difference between a granted patent and patent pending status.

	Granted Patent	Patent Pending
Legal Protection	Full exclusive rights to enforce.	No enforceable rights (limited provisional rights in some cases).
Status	Approved and issued by the patent office.	Application filed, under examination.
Duration	Typically 20 years from filing date.	Temporary, until granted or rejected.
Marking	“Patented” or patent number.	“Patent Pending” or “Patent Applied For.”
Certainty	Confirmed patentability.	Uncertain outcome; may be granted or rejected.
Enforcement	Can sue for infringement.	Cannot sue (except for provisional rights in specific cases).

Will the Patent Office give me patent pending status on my filing date?

No, there is no such thing as a patent pending notice. When you file your patent application at the patent and trademark office, you will receive an Official Filing Receipt (OFR). But, your patent pending designation begins on your patent application filing date. This is true whether you file a provisional application or a nonprovisional patent application.

Conclusion: Filing a patent application will grant you patent pending status.

Now you know that when someone says they are patent pending it means they have a patent application filed at the patent office. They likely don’t have any legal protection with their pending application, but they may hope to deter potential infringers who would otherwise try and copy their product. One of the easiest ways to become patent pending is to file a provisional patent application. An experienced patent attorney can help you through the patent application process. This will ensure your intellectual property is protected as you start and grow your business.