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I have filed a US provisional patent application. Can I label my products sold in Singapore, Germany, Australia, China and Hong Kong with "patent pending"? are there legislations in these countries restricting the use of "patent pending"?

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I will limit myself to the English-speaking jurisdictions, which happen to have adopted UK patents acts from various points in time, and which are therefore very similar.

I would assume that Germany and China have equivalent provisions, though I do not provide any evidence to this.

Australia

You could not use "patent pending" in Australia on the basis of a US provisional.

The Patents Act 1990 (AU) s 178 provides:

(2) A person must not falsely represent that an article sold by him or her is patented in Australia, or is the subject of an application for a patent in Australia.

(3) Without limiting subsection (2): …

(b) a person is to be taken to represent that an article is the subject of an application for a patent in Australia if the words "patent applied for" or "patent pending", or any other word or words implying that an application for a patent for the article has been made in Australia, are stamped, engraved or impressed on, or otherwise applied to, the article.

Singapore

You could not use "patent pending" in Singapore on the basis of a US provisional.

The Patents Act (Cap 221, 2005 Rev Ed) (SG) s 100 provides:

(1) If a person represents that a patent has been applied for in respect of any article disposed of for value by him and —

(a) no such application has been made; …

he shall, subject to this section, be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 or to imprisonment for a term not exceeding 12 months or to both.

Hong Kong

You could not use "patent pending" in Hong Kong on the basis of a US provisional.

The Patents Ordinance, Cap 514 (HK) s 143 provides:

(1) Subject to this section, a person who represents that a patent has been applied for in respect of any article disposed of for value by him when in fact—

(a) no such application for a patent has been made; …

commits an offence and is liable on summary conviction to a fine at level 3.

(3) For the purposes of subsection (1), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the words “patent applied for” or “patent pending” or “已申請專利” or “專利申請待決”, or anything expressing or implying that an application has been made for a patent in respect of the article, shall be taken to represent that an application for such a patent has been made.

  • I'm a little confused. If there is only a US provisional application, then there is not an application in Australia. The quote cited suggests you can't use the term "patent pending" unless there is an Australian patent pending. I'd assume to patents pending would have to be in the country that you are selling in to claim "patent pending". – Eric Shain Jul 9 '17 at 15:06
  • @EricShain That's right. If you said "patent pending" on a product in Australia solely on the basis of the US provisional, you would be committing an offence. I think my "yes" might have been misleading, which was intended to cover the question about whether there are restrictions on it. – Maca Jul 9 '17 at 21:08
  • What would the position be if you intend to apply for a PCT application in Australia, Singapore and Hong Kong based on the US provisional? Technically then the patents are pending in Australia, Singapore or Hong Kong, not so? – Deon P Hugo Jul 11 '17 at 18:49
  • @DeonPHugo If you mean a national phase entry from a PCT application, then quite right. I think you'd be hard pressed to call a PCT application which merely designates those countries an application in that country. – Maca Jul 11 '17 at 22:53
  • @Maca, your answer seems to suggest that the same restrictions apply in UK. – Phoebe C Jul 13 '17 at 17:11

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