You may encounter the term ‘patent pending’ in relation to your own patent application or when checking what inventions already exist. It refers to a patent application that has been filed but not yet granted. A patent is an intellectual property (IP) right that gives you exclusive commercial rights to your invention. Your invention may be a device, substance, method or process and it must be new, useful, inventive or innovative to obtain protection.
Types of Patents
1. Standard Patent
A standard patent provides long-term protection and control over an invention. The protection lasts for up to 20 years from the filing date of the application (or up to 25 years for pharmaceutical products). The invention claimed in a standard patent needs to be:
- Involve an inventive step; and
- Be able to be made or used in an industry.
You must request an examination of your application within five years of filing it. The examination will occur within 12 months of the request. A patent pending for a standard patent means your application could be waiting to be examined for months or several years. The patent will not be enforceable until examined.
2. Innovation patent
This type of patent is worth looking into if you want protection for an invention with a short market life that might be overtaken by newer innovations. An innovation patent lasts up to eight years and protects inventions that do not meet the inventive threshold to qualify as a standard patent.
It requires an innovative step rather than an inventive step. This exists when the invention is different from what is known before and the difference constitutes a substantial contribution to the operation of the invention. Rather than protecting new and cutting-edge inventions, this patent protects an incremental advance on existing technology.
An innovation patent pending period is relatively short as usually it is granted within one month. This is because there is no examination before it is granted. Since it is not examined, an innovation patent is not legally enforceable. Examination takes six months if requested by the patentee, a third party or the Commissioner of Patents.
The Australian Government is in the process of phasing out the innovation patent. This means the last date you can file a new innovation patent will be 25 August 2021. Existing innovation patents filed on or before 25 August 2021 will remain in force until their expiry.
3. Patent Pending for a Provisional application
A provisional application is essentially a placeholder that signals your intention to file a full patent application later on. At this stage, patent pending may never amount to protection for a provisional patent. However, it does establish a priority date which you need to prove you were the first to come up with the new invention. You must apply for a patent within 12 months of filing your provisional application to make use of the priority date.
4. Patent Pending for International protection
A Patent Cooperation Treaty (PCT) application is worth considering if you want to expand your business overseas. A PCT application indicates whether your invention can be patented and lets you determine which countries you would like to have patent protection in.
A PCT application is submitted to examination based on WIPO standards accepted by 151 member countries. WIPO will provide you with a final report within 28 months of the filing date. If the report is favourable, the applicant must file for a patent in each country where they want protection. It will not be enforceable until accepted in a specific country.
The term ‘patent pending’ is relevant to the different types of patents and applications. You should consider the ‘patent pending’ period as it will impact the protection available for your invention. If you would like assistance with a patent application or would like to discuss a potential one, contact OpenLegal on 1300 337 997 or fill out the contact form on this page.