What rights do you have while patent pending?
Can a patent filer can stop copycats and would-be infringers while their patent application is pending? The answer is no. An applicant cannot stop competitors until its patent application matures into an issued patent. Having patent-pending status, however, may eventually lead to significant patent rights.
Being patent pending is like running a race. You don’t get the prize until you cross the finish line. The critical factor for an innovator, however, is to be in the race. Without patent pending status, you get zero patent rights.
Can you infringe a pending patent application?
Technically, there is no infringement of a patent application. Infringement can only occur when a patent is granted.
When you see a published patent application, recognize the difference between a patent publication and a granted patent. A patent publication does not necessarily mean that the application matured into an issued patent. You may want to track the status of a pending application. For example, you can check Public PAIR on uspto.gov to see the latest developments of a published utility nonprovisional patent application.
Why can’t patent applications be infringed?
Patent claims in a pending application are in a state of flux. Claims are frequently amended during the normal prosecution of a nonprovisional utility application. In the typical examination of a utility patent application, at least one Office Action containing prior art rejections will be issued. Applicants will often amend their utility patent claims to make them more unique over the prior art references. Therefore, the scope of pending claims on a given day (or month or year) may change drastically as the claims undergo amendments to overcome the patent examiner’s rejections.
It would not be fair to the general public to assume that an IP owner with a pending patent application is instantly allowed to stop others when the validity of the pending claims have not been examined.
How to maximize potential recovery
An inventor or owner of a pending application can take certain steps to maximize potential recoverable damages by sending the copyist/competitor a copy of the published patent application. If the claims that are ultimately granted are substantially identical to those in the published application, then the patent owner would be able to back-date their damages to the date the published application was sent to the infringer.
Under 35 USC Section 154(d), a patent owner may be able to recover a reasonably royalty counting from the date the infringer received actual notice of the published patent application if the claim infringed in the issued patent is substantially identical to the invention claimed in the published patent application.
You would still need to wait until your patent application is granted before you can take legal action against an infringer, but you can at least put yourself in the best position to maximize your potential recovery.
How to strengthen your position while patent-pending
You do have some options while patent-pending. First, keep track of what your competitors are doing. Suppose they launch a product that might possibly fall under your claims. Talk to your patent attorney about amending your claims in your pending application to cover the competition.
Second, consider filing a continuation application once your current patent application is allowed. This will give you a second bite at the apple if your competitors attempt to design around your first patent.