Provisional Patent Pending?

One of the most common questions asked by any applicant or inventor after a new provisional application has been filed is: ‘can I now say “patent pending” about my product/service?’

You might think that the answer to this would be straightforward.  Ultimately, the client just wants a ‘yes’ or ‘no’ answer.  Indeed, most patent attorneys will answer ‘yes’ without hesitation.  The main thing – we will tell our clients – is not to represent that you actually have a patent when all that you actually have is an application.

But is it really so simple?

I was given pause recently when someone asked this very question of IP Australia (@IPAustralia) on Twitter.  The answer that came back (across four Tweets that I have here concatenated into a single reply) was this:

A standard patent can only be enforced once it is granted. ‘Patent pending’ is used by some applicants to indicate they have lodged a patent application which has not been granted. A provisional patent is not a patent application per se and won’t result in a granted patent and hence saying 'patent pending' for a provisional application would be misleading.

I cannot say that I agree with this, and in particular I do not think there is anything misleading in using the phrase ‘patent pending’ while there is any form of application on-foot that has the potential to lead ultimately to granted patent rights.  However, there are laws that apply to the representations made in relation to patents and applications, and applicants do need to be careful about the claims they make with regard to patent rights.

The topic is therefore worthy of some closer investigation.

What Does ‘Patent Pending’ Mean?

The terminology ‘patent pending’ has been in use for a long time.  Some cursory web searching failed to turn up any firm historical information about its origins (although one of my colleagues reminded me that Professor Pat Pending was one of the characters in the 1968 Hanna-Barbera animated series Wacky Races).  However, I am unaware of it having any formal legal definition anywhere in the world. 

IP Australia’s IP Glossary defines it as ‘the condition that occurs between the time a patent application was filed and the finalisation of that application’, while the USPTO’s Patent FAQs page states that ‘the terms “Patent Pending” and “Patent Applied For” are used to inform the public that an application for a patent has been filed.’

Generally speaking, I expect that most members of the public who are actually aware of the term would regard it as indicating that some sort of application has been filed, such that there is a potential for granted patent rights in the future, but that no actual patent yet exists.  I do not think that the public-at-large would generally draw any relevant distinction between provisional applications (which have a fixed term of 12 months, and then expire without any possibility of rights being granted unless a further application is filed claiming the benefit of the provisional filing date) and complete or – in US terminology – ‘nonprovisional’, applications (which may result in granted patent rights if all required actions are taken, all necessary fees paid, and if there are no lawful objections to the grant of a patent, such as lack of novelty or inventive step).

I therefore do not think that there is anything ‘misleading’ in the use of the phrase ‘patent pending’ while any form of application is in progress, so long as the potential remains for valid patent rights to be granted as a result.

‘False Representations’ Under the Patents Act

The Australian Patents Act 1990 actually has something to say on the matter of false representations in relation to patents and applications.  In particular, this is addressed by section 178, which creates a number of offences having penalties of ‘60 penalty units’ (currently equivalent to A$10,200). 

Relevantly, subsection (2) provides that:

A person must not falsely represent that an article sold by him or her is patented in Australia, or is the subject of an application for a patent in Australia.

It is notable that this provision only applies to ‘articles’, which means that there is no prohibition under the Patents Act against making whatever representations you like about patented services, or products that do not fit the description of an ‘article’!

Section 178(3)(b) deems that:

…a person is to be taken to represent that an article is the subject of an application for a patent in Australia if the words “patent applied for” or “patent pending”, or any other word or words implying that an application for a patent for the article has been made in Australia, are stamped, engraved or impressed on, or otherwise applied to, the article.

Therefore, if you actually write ‘patent pending’ on an article this is, by definition, a representation that you have filed ‘an application for a patent’.  So, if the application is a provisional application, is this representation ‘false’?

The argument that seems to be implied by IP Australia in its Twitter response is that a provisional application cannot, in itself, result in a patent being issued, and that it is therefore not ‘an application for a patent’.  I do not think this is the correct view, for a number of reasons.  Briefly (though much more could be said about each of these):

1. the Dictionary in Schedule 1 of the Patents Act makes only one reference to provisional applications, where it defines ‘provisional specification’ as ‘a specification filed in respect of a provisional patent application’;
2. section 29 of the Patents Act sets out the general rules for an ‘application for patent’, and clearly provides that ‘an application may be a provisional application or a complete application’; and
3. we have been here before – the scheme of distinguishing provisional from complete applications by reference to the specification, rather than the nature of the application, has long been regarded as assuring the applicant of a ‘right of priority’ under Article 4.A of the Paris Convention, which refers to the filing of ‘an application for a patent’.

In my opinion, the correct view is therefore that a provisional application is an application for a patent, albeit one that is contingent upon subsequent ‘completion’ by the filing of a complete application accompanied by a complete specification.

False Representations under Consumer Laws

Unfortunately, section 178 is not the sole legal basis upon which a claim of ‘patent pending’ could be regarded as misleading.  The Australian Consumer Law (ACL) (formerly the Trade Practices Act) deals generally with misleading and deceptive conduct in trade or commerce.  Section 18 of the ACL corresponds with section 52 of the former law, which was raised in relation to a false representation that a patent had been applied for in Elconnex Pty Limited v Gerard Industries Pty Limited [1991] FCA 567.

In the Elconnex case, there was no question that the representations – consisting of the markings ‘pat pend’ impressed into products sold by Gerard Industries – were misleading, since no patent application, of any kind, was ever filed.  The Patents Act 1952 was still the relevant patent law, which included (in section 174) provisions almost identical with those in section 178 of the 1990 Act.  As in the current Act, however, these were criminal provisions requiring the authorisation of the responsible Minister prior to a prosecution.  The Trade Practices Act, on the other hand, could be invoked in civil proceedings (as may the equivalent provisions of the current ACL).

The judge in Elconnex (Burchett J) expressed the following views on the terminology ‘patent pending’ versus ‘patent applied for’ (at [4]):

Section 174 treats “patent pending” and “patent applied for” as conveying the same representation. For the purposes of s. 52 of the Trade Practices Act, this is not necessarily so. As a matter of language, “patent pending” suggests that a patent will or is expected to issue, whereas “patent applied for” is much more bland. When a market leader in a particular area represents that a patent is pending, it seems to me that its conduct is likely to produce the impression that it has made an invention, or acquired the benefit of an invention, for which a patent will issue, or at least is expected to issue.

Based on my comments above, it should be clear that I do not agree with Burchett J.  In my view, most consumers would regard ‘patent pending’ and ‘patent applied for’ as essentially interchangeable, with no regard for the distinction between provisional and complete applications.

Conclusion – Use ‘Patent Pending’ With Due Care

In summary, I think that ‘patent pending’ is often an entirely acceptable and appropriate marking for a product or service that is the subject of an Australian provisional application.  However, there are both civil and criminal penalties potentially available for misleading marking or promotion.  It is therefore advisable to take particular care when applying markings to goods and services covered by pending patent applications – provisional or otherwise.

One potential pitfall with ‘patent pending’ is that if the application on which the claim is based lapses, or is abandoned, the representation immediately becomes misleading.  For this reason, at least one of my colleagues prefers ‘patent applied for’, on the basis that this remains a technically true statement, even if the patent application in question has lapsed or become abandoned.  While this may or may not be correct, this approach certainly has the advantage, at least while the application remains pending, of being consistent with the opinion of Burchett J in the Elconnex case.

Yet ‘patent pending’, or one of its common abbreviations such as ‘pat pending’ or ‘pat pend’, remains the most concise and widely-recognised language for informing the public that a patent application has been filed, and that granted patents rights may one day result.  I think these terms are acceptable, and not misleading when used in good faith, in relation to both provisional and complete patent applications in Australia.

So, once your provisional application has been filed, feel free to consider marking your products and/or promotional materials with ‘patent pending’.  However, I would always recommend that you obtain professional advice that is specific to your particular circumstances because, when it comes to patent law, even the most seemingly straightforward matters can prove to be far less simple than anticipated!

Tags: Australia, Marking, Priority claim, Provisional applications