Whether one may safely copy a product which is merely “patent pending” depends on a variety of circumstances. Preliminarily, a “patent pending” designation on a product indicates that a patent application has been filed for the product, but it has not yet issued into a patent. Normally, one cannot be sued for patent infringement for activities occurring before the patent issues. A “patent pending” marking on a product does not give the patent applicant any rights to sue anyone. Thus, one could conclude that a product marked “patent pending” is safe to just copy. However, there are some caveats.
A patent for the marked product may eventually issue. If one has invested time and money into equipment and facilities for manufacturing the copied product, that investment may be totally lost once the patent issues. First, there could be an injunction completely halting the copying activity. Injunctions are granted in a high percentage of patent infringement cases. Second, there could be damages for patent infringement, including recovery of lost profits. And third, if the copier learns that the patent has issued and continues the copying behavior, then that could qualify as “willful infringement” allowing for recovery of triple damages against the infringer. In addition, the copier may have to pay the patent holder’s attorney fees. Thus, when one considers the investment in time and money to set up equipment and facilities, the risk of an injunction, the further risk of treble damages, and the risk of attorney fees, copying a “patent pending” product may not be a wise decision.
But the risks do not end there. Other companies may have patents covering that product. Maybe several companies have patents on the “patent pending” product but have cross-licensed each other. It is advisable to perform a freedom-to-operate search of issued patents and pending patent applications. A freedom-to-operate search will help determine if it is safe to make and sell a product. A patent attorney can help you decide if a freedom-to-operate search makes sense and how to obtain one.
In very limited circumstances, there is a very small risk that a copier could be liable for pre-issuance damages. While it is generally true that one cannot be sued for patent infringement until after a patent issues, the law was changed a number of year back to allow for what is called pre-issuance damages in a limited set of circumstances. If the patent application for the patent pending product has been published, as many patent applications are, if the copier knows of the published application, and if a patent eventually issues that claims essentially the same invention as is claimed in the published application, then the copier may be liable for pre-issuance damages. It is unlikely that all of the above circumstances will occur, so pre-issuance damages are not often awarded. But still, there is a risk that should be discussed with a patent attorney before proceeding.
Thus, there is a substantial set of risks to just copying a product marked “patent pending.” But there is another way. It is called “design-around.” This occurs when one obtains the patent or patent application and examines the claims. The claims are what describe the claimed invention. To take a simplified view, a comparison of the claims to an accused product is what determines infringement. So the person wanting to copy a product marked patent pending, may design their product to avoid one or more elements in the patent claims and thereby reduce the risk that they will be found liable for infringement. A “design around” also has pitfalls and should not be attempted without consultation with an attorney well-versed in patent infringement litigation.
The bottom line is that someone who is considering copying a product marked patent-pending should consult with a patent attorney before proceeding.