Can you infringe a pending patent application?
You cannot infringe a patent application. Only issued patents can be infringed. Is this fair? It depends.
For creators of genuinely innovative products, it may seem unfair that they cannot stop copycats unless and until their patents are granted. For competitors wanting to sell me-too products, they may find it fair to sell such products unless and until a valid patent is issued.
Need to sell products safely or enforce your patents against competitors? Contact US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to explore how our patent infringement experience can benefit your business.
How can you tell the difference between a published application and a granted patent?
At the outset, design patent applications are never published. Utility nonprovisional patent applications are typically published unless nonpublication is requested upfront.
Provisional patent applications are not published. They will, however, be made available to the public if they are timely converted to nonprovisional application.
Keep in mind that nonprovisional utility patent applications are not published right away. Instead, they are normally published around 18 months from the filing date unless nonpublication was requested concurrently with the initial filing.
Whenever you see a patent number starting with US followed by a year (e.g., 2021 – see below), you are looking at a published utility patent application also known as a patent publication. For example, you may see a patent publication number such as US20190244112 which refers to a patent publication by one of our clients.
How do you know if a patent number is for a granted patent?
Focus on the patent number. A patent number starting with the letter D is an issued design patent.
Utility patent numbers may be a seven-figure number starting with an 8 or 9, or an eight-figure number. Most utility patents starting with a 6 or less have expired by now.
How can you tell if a patent application has or will become a granted patent?
Pending design patent applications are not published, so you cannot track the status of a design application. In other words, the only time you will see a design patent is only if it is granted.
The status of published utility patent applications can be checked by looking up the application number on USPTO Patent Center. In the Documents and Transactions history, you can see Office Actions and the applicants’ responses. A pending utility application that is about to be granted will show a Notice of Allowance in this section.
How do you reduce the risk of future patent infringement?
A patent attorney experienced in infringement can provide guidance on how to navigate around allowed claims that will soon issue. Chances are, those claims were amended through the course of prosecution. Therefore, the final scope of the allowed claims will likely be quite different and more limited than the scope of the original claims submitted with the initial filing.
Be wary of child patent applications
Just because you avoided a first patent filing does not mean that you are safe to make your product. The coast is not always clear. The patent owner may have filed child applications to pursue different claims. It may be prudent to consult with a patent attorney who can look into the patent landscape and help you avoid infringement risks.
