Protecting Your Ideas

172

Filing and Prosecuting the Patent Application

Patent Pending Status

Once the patent application is prepared and the formal papers

have been executed, it is ready to be filed in the U.S.P.T.O. There are

several ways the application may be filed:

(1) It may be sent to the U.S.P.T.O. by regular U.S. mail.

(2) It may be sent to the U.S.P.T.O. by the U.S. Postal Service

Express Mail to Addressee.

(3) It may be hand delivered to the U.S.P.T.O.

The filing date of a patent application is the date on which the

U.S.P.T.O.

receives

the application. If there is a statutory bar date that

is quickly approaching, filing the application by regular U.S. mail is

not recommended. However, filing an application by Express Mail

and using an Express Mail certificate will afford the application a fil-

ing date as of the date the application is

mailed

to the U.S.P.T.O. This

is especially beneficial if the application must get to the U.S.P.T.O.

before a statutory bar date and hand delivery is not an option. Most

practitioners file their patent applications using an Express Mail cer-

tificate. Besides obtaining the earliest possible filing date, Express

Mail makes it possible to track the application if it gets lost. Once the

patent application is filed and the U.S.P.T.O. receives it, the invention

may be marked as "patent pending."

Patent Pending is a phrase marked on a product indicat-

ing that a patent application has been filed for the product

and that the patent application has claims that cover the

product.

When a person marks a product patent pending, he or she is

letting potential infringers know that a patent has been applied for

173

Patent Pending Status

and that the patent may issue anytime. Marking an item patent pend-

ing

does not

offer an applicant the fight to exclude others from mak-

ing, using, selling, or importing the invention. Only an issued patent

will provide this right. Therefore, marking an item patent pending

only serves as a warning to potential infringers that a patent may is-

sue soon. It is unlawful to mark an item as patent pending or patent

applied for when, in fact, there is no patent pending. If this is done

with the intention of deceiving the public, this type of deceit is pun-

ishable with a fine of up to $500 per offense. 8

WARNING:

Never mark an item patent pending if you

have not applied for a patent.

WARNING:

Marking an item patent pending does not

provide any rights to exclude others from making, us-

ing, selling, or importing the invention in the U.S.

When the U.S.ET.O. receives the patent application, it is re-

viewed to make sure that all the papers are in order and an applica-

tion number (or serial number) and a filing date are assigned to it. A

filing receipt (Fig. 8.6) is then sent to the patent practitioner. It usual-

ly takes about 8 to 12 weeks from the time the patent application is

mailed to the U.S.ET.O. to receive the filing receipt. The filing re-

ceipt serves two main purposes:

(1) It provides a serial (or application) number and filing date

for the application; and

(2) It grants a license to file the application in a foreign

country.

After the application is assigned a serial number and filing date,

it is passed on to the proper examining group. The Examiner con-

ducts a search and examines the application to see if the invention