Labeling product as “Patent Pending”

Bindu Sharma (bindu@origiin.com)

From the date of filing of patent application to the grant is a long procedure and often disappoints the inventor for the reason that grant of patent is going to take long time and securing patent of his interest becomes a great worry till then. However, when a patent application is filed (provisional or complete specification), patent office issues a receipt on which date of filing or priority date is stated. It is worth noting that from that date, the product for which patent has been applied for  or product made by a process for which patent has been applied for can be marked as “patent pending” or "patent applied for" as a warning or a notice, meaning that patent has been applied for but not yet granted. The marking as an express notice serves to notify potential infringers, that they may be liable for damages, seizure, and injunction once a patent is issued.  The patent law gives applicant all rights and privileges of a patent holder except that law suit cannot be initiated till patent is granted.

 Prime advantages of marking products as “patent pending” are that it not only helps to avoid innocent infringement but also encourages patentees to give notice to the public that the article is patented and also aids the public to identify that the article is patented. Indian patent law (Section 111, Indian Patent Act of 1970) limits the award of damages in patent infringement cases when an infringer or the defendant is able to prove that he was unaware of the patent-in-suit. However, the Patent Act effectively reverses this allocation of the burden of proof in cases where an article is marked with the word “patent” and a patent number. In a suit for infringement of a patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed. Therefore, marking the products as “Patent pending” serves an important public notice that patent has been applied for and leaves little space for innocent infringement.

Patent pending marking is not restricted to the patent application but also for granted patents in which case the products need to be marked as “patented”. However, a person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word “patent”, “patented” or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question. That means that mention of patent number is also important to be mentioned if the product in question is patented. For example, in Australia, the preferred marking is "Aust. Pat. App. No. yyyynnnnnn" where "yyyy" is the four-digit year of the application and "nnnnnn" is the six-digit number allocated by the Australian Patent Office.

According to Section 120 of Indian Patents Act, 1970, use of marking, such as “Patent pending” or “patent applied for”, where no patent has been actually applied for is an offense and if any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with fine which may extend to one lakh rupees. The use of words “patent”, “patented”, “patent applied for”, “patent pending” or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in India, or to a pending application for a patent in India, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside India".

Even though marking products for which patent has been applied for, care should be taken while using the word "Patented” as it should be used only after grant of the patent. Hence, before grant is accorded, it is advisable to mark products as "Patent Pending" or “Patent applied for”, to indicate that patent application has been filed but patent is not granted yet.