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Benefits of patent pending status and how to track a competitor's USPTO application - YouTube
Channel: OC Patent Lawyer
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Inventors think since their product聽
is patent pending, they can threaten聽聽
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the competition with a lawsuit. I'm聽
suing you stop copying my product.聽聽
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The competition believes nothing's聽
at risk. So, who cares? Who's right?
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An inventor can't sue anyone with a聽
patent pending because patent pending
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infringement does not exist. A patent pending聽
simply means you filed an application with the聽聽
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Patent Office. You don't have your patent yet.聽
Later, I'll explain why the competition shouldn't聽聽
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just ignore your threat. The inventor can send the聽
warning though but the warning would go something聽聽
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like this. IF you copy my product and IF my聽
patent gets granted, I'm suing you. That's a lot聽聽
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of ifs. So you might wonder as an inventor, why聽
should you even get your product patent pending,聽聽
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if you can't sue anyone for it. And, here's聽
why. Patent pending gives you a priority date.聽聽
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Patent pending isn't about what you can assert聽
against others at this moment in time. It's really聽聽
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about who the patent office would consider聽
the true inventor later on. The one with the聽聽
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earlier priority wins that battle between the two聽
inventors. When you have priority you can have聽聽
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the confidence to start marketing your product. No聽
one can see your product and steal your idea away聽聽
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by filing an application later on. Between you聽
and any other person, you would win the race to聽聽
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the patent office. And, that's the primary value聽
when you're patent pending. A second reason to get聽聽
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patent pending is that you can actually ask for聽
damages from a period of time before the date the聽聽
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patent granted. We all know you can get damages聽
from the infringer after the patent grants.聽聽
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That's when damages start to add up. But, there's聽
a special rule that allows you to get damages from聽聽
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a period of time before the patent was granted.聽
If your patent granted in January you can get聽聽
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damages for the December of the prior year. But聽
that would only occur under certain conditions.聽聽
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One of the requirements is you have to聽
give the infringer actual knowledge of聽聽
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your patent application. Now let's talk to聽
the competition and see what they ought to do.聽聽
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As i mentioned before, there's a lot of IFs to be聽
liable when someone sends you a warning letter.聽聽
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It's a good sign though, if they only聽
mention that their product is patent pending.聽聽
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They don't have a patent. Otherwise, they would聽
have told you so. Even though their application聽聽
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is just pending, you still need to be aware that聽
you could be sued for patent infringement later on聽聽
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and you could be liable for back dated money聽
damages if their patent is granted. But that's聽聽
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a big IF, because in 2020, the rejection rate聽
was 38.3 percent for all patent applications聽聽
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that were filed. There's a huge percentage that聽
gets rejected but there's also a big percentage聽聽
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that matures into a patent. So, I wouldn't聽
ignore the letter. But, at that very moment,聽聽
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it may not be the most pressing issue. But, there聽
are a couple of things that you ought to do.聽聽
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First, you ought to figure out whether the聽
application is likely to be granted as a patent聽聽
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and track the progress of the application. Locate聽
and read through the image file wrapper. It聽聽
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contains all of the written communications聽
between the inventor and the patent office聽聽
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and you can see how the conversation is going.聽
If you see a lot of rejections, it's not going聽聽
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well for the inventor. But that doesn't mean that聽
the inventor isn't going to get a patent. It just聽聽
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means that at that moment in time, it doesn't聽
look well. The second thing you ought to do聽聽
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is have the USPTO send you an automatic update聽
when there's a communication between the USPTO聽聽
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and the inventor. All you have to do is set up聽
a my USPTO account. If you want to learn more聽聽
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about how to look up an application at the USPTO聽
or get auto updates, subscribe to my channel.
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