Can I Mark My Design with Patent Pending?

More on design patents.

Dear Rich: If I submit a design patent, am I allowed to mark my product as patent pending up until the product is either accepted or rejected?
Once you have filed a  provisional, utility or design patent application with the U.S. Patent Office, you can mark your product as "Patent Pending." False use of the marking -- that is marking it when no application is pending -- is prohibited. You can place the notice (or something similar such as "Pat. Pend." or "Patent Applied For") on the invention, the design product, the product package, marketing materials, at your website, or in similar locations. And of course, labeling your design as "Patent Pending" does not give you any patent rights. Protection begins once the design patent is issued. Here's more on "patent pending" status.

What Good is "Patent Pending"?

Dear Rich: If I send in a patent application can I then put "patent pending" on my product? Do I have any protections against somebody stealing my idea during my wait to receive my patent. "Patent pending status" is achieved by filing either a regular patent application (RPA) or a provisional patent application (PPA). Placing the "Patent Pending" wording on your product puts the world on notice that the USPTO is in the process of examining your great idea (and hopefully will approve and issue a registration). If your application is rejected (or a year passes after your PPA is filed and you haven't filed an RPA), you should remove the "patent pending" tag. During this pendency period -- before the USPTO approves your application -- you cannot use patent law to stop others from making, using, or selling your invention. You must wait until the patent issues before you can chase infringers.
18 month rule. There is one twist: If your RPA is published (which usually occurs 18 months after filing the RPA) and the infringer is made aware of the publication, you can later sue (after the patent is issued) and collect damages for the period starting with the date of notification. In other words, you must write to an infringer and let them know that the patent is published and that you're coming after them once you get your registration.
Non-patent claims. Even though you cannot pursue the infringer under patent law, it's possible that you may have a claim that they copied your trademark or your copyrighted designs, or they used unlawful means to obtain your trade secrets.

What's the Right Patent Royalty?

Dear Rich: I have a patent pending product line. The patent was filed in January, 2011. A company has approached me and showed interest in licensing the technology. I had them sign an NDA. I shared all the info, production sheets, gave them actual samples, provided them with copies of my marketing material, approved their production sample. They want to use my three trademarks, as I am considered an expert in this particular technology. All of a sudden they are telling me that they want to produce the product, use my trademarks, but pay the royalty only once the patent is issued. I know that royalties are up to 8%. I like your approach of a tiered royalty. Although my products are still patent pending, and they want to use three of my trademarks, I feel a 5% royalty is what I should ask for. What do you think? Choosing the right royalty is a business decision, not a legal one, so we leave that one up to you. As for the rest of it, here's some info that may point you in the right direction.
The trademark licenses. When a company wants to license trademarks and patents, it's not unreasonable to set separate royalty rates for the trademarks. That way, if the trademark goodwill outlives the life of the patent -- for example, as with a product such as Scotchgard -- the trademark owner will still receive revenues, despite the lack of patent protection.
Two tiers.  In previous entries and in our licensing book, we have suggested a two-tiered royalty for patent-pending products: one rate if the invention acquires patent protection; the other rate if the USPTO won't issue a patent. This often works when a product's success is tied to a first-to-market strategy.
Will your NDA protect you?  If the company wants a single royalty -- they're saying that they will only license the product if the patent is granted -- then you need to re-group.  If the product doesn't get a patent and it still has commercial potential, can the company go ahead with production and cut you out of the picture? Will your NDA protect you if, during the patent process, your patent is published as typically happens after 18 month -- and it's no longer a trade secret? Does your NDA prohibit the company from selling your product if it doesn't enter into a licensing deal? These are issues where an attorney's analysis may prove helpful.

What is a Registered Patent?

Dear Rich: The company I requested to review my "pending patent" said I must first have a "registered patent" before they will review it. What is a "registered patent"? You either have a patent or you don't, so we think the term "registered patent" means that the company wants you to have one. If you're patent-pending, you don't have a patent. You've filed the appropriate paperwork but the USPTO has not approved your application. Some inventors mistakenly believe they have a patent after filing a provisional patent application (PPA). The PPA preserves your place in line at the USPTO and it may serve as a deterrent but it's not a patent. You cannot use a PPA to stop others from copying your invention, and it only has value if you file a regular patent application within one year of filing the PPA. Because less than half of patent pendings "matriculate," into patents, a lot of companies are wary of patent pending status.
(BTW, there's a lot of helpful patent business info at Nolo's new patents and business site.)