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I know it is illegal to advertise an invention as "patent pending" unless a patent application has been filed. I also know that provisional patent applications are never actually examined (unless you reference or convert). They are also low cost to file (currently $65 for micro-entity status).

My question is: If a company wants to be able to put "patent pending" on their invention, and they file a provisional patent application, but have absolutely no intention of ever filing a regular patent application, is that OK? Let's assume they are making a machine and they think it is not eligible for a patent. It's not novel. They've already been selling it for decades. etc. They file a provisional application anyway and put "patent pending" on their machine. Is that allowed?

I think that the relevant law is "35 USC 292 - False marking."

It seems to me that someone could file a provisional application that says "invention description: any possible arrangement of matter" and then they could put "patent pending" on whatever they want for a year. Is that right?

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Fraudulent use of a patent pending designation is prohibited by the law of many countries and inventors should be cautious when marking products or methods that may arguably not be covered by any pending patent application.

from https://en.wikipedia.org/wiki/Patent_pending

Some persons mark articles sold with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only give information that an application for patent has been filed in the USPTO. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.

from https://www.uspto.gov/patents-getting-started/general-information-concerning-patents#heading-29

And the law you already cited: 35 USC 292 - False marking.

Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public—

Now arguably it does say that the use is only prohibited when no pending application exists, but it also says "for the purpose of deceiving the public". I don't know any case law, but I'd interpret the combination to mean that having a provisional on everything would meet the deceiving part and I don't think a judge would believe that you thought you had a patent pending on your product.

As for using patent pending if the application is not novel, I don't see why that wouldn't work, after all, you do have a pending patent. If however somebody were to prove that you filed it only to deceive the public, knowing it couldn't possibly pass, my guess is, you would lose that lawsuit and/or be fined.

  • What about the use of "patent pending" if a design patent is applied for? These are much easier to draft. – Eric Shain Jun 12 '17 at 14:52
  • If you don't follow up the provisional with a non-provisional within a year wouldn't the "patent pending" no longer be true? – Eric Shain Aug 12 '17 at 1:21
  • @EricShain I think so, yes – DonQuiKong Aug 12 '17 at 8:07
  • Is there any rule that prevents an inventor from filing another provisional application, thus lawfully obtaining another (and another...) year of "patent pending" status? – Upnorth Aug 13 '17 at 21:53
  • @Upnorth I don't think so, unless maybe if they can prove your trying to deceive the public. So filing the same application again and again ... But I'm just guessing here – DonQuiKong Aug 13 '17 at 22:02

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