Registered Patent vs. Patent Pending

Registered patent vs. patent pending Inventors, entrepreneurs and the general public sometimes do not understand the difference between them. A registered patent confers rights, and a pending patent also confers certain rights. It is important for inventors and entrepreneurs to know the differences between them in the process of commercializing and advancing their venture.
 

A registered patent is a right of ownership over an invention for twenty years from the date the application was filed, and not from the date the patent was granted, as is sometimes mistakenly thought. The patent confers a monopoly on the patent holder (the patent holder may not be the inventor, for example in the case of a patent that was sold, or an employee who invented an invention for a company).

A registered patent is granted after an examination process carried out by patent examiners at the various patent authorities in Israel and around the world. In the examination process, the patent examiner checks whether the application filed meets the conditions of the Patents Law, for example that the invention is new and involves an inventive step.
 

A patent pending is an application that has been filed with a patent authority and is in the examination process, known as PATENT PENDING. From the day the documents are filed with one or more patent authorities, the legal status is patent pending.

A pending patent grants the owner of the patent registration application a priority date under the Paris Convention for 12 months in some 175 countries. That is, if an applicant has filed a patent application that is at the patent pending stage, and another person, for example a competitor, files the same invention in one or more of the countries that are signatories to the Paris Convention, the applicant who filed first, even in only one country, will hold the priority date, i.e. will have the right of priority, if the patent office approves it.

However, it is important to note that in order to exercise the right to the priority date, a patent registration application must be filed in each country in which the owner of the invention wishes to preserve the right to his invention. The individual application in each country must be filed before 12 months have passed from the filing date in the first country, and of course the application must be for the same invention.

Another right of the owner of an invention at the “patent pending” stage is a right of provisional protection from the date of publication, which is 18 months from the filing date. That is, the patent authorities publish the filed application 18 months from the filing date.

If the process has not yet been completed and there is still no registered patent, there is still some protection from the date of publication, but the claim can be filed only after a registered patent is granted. That is, after receiving the patent certificate, it is possible to sue retroactively from the date of publication. Section 179 of the Patents Law states:
“179. Action for infringement shall be brought only after the patent was granted; however, if action for infringement was brought, then the Court may –
(1)  grant compensation for the exploitation of an invention committed after the date of publication under section 16A and before the date of publication under section 26; such compensation will be in the amount of reasonable royalties which the infringer would have been liable to pay had he been granted a license to exploit the invention to the extent of such exploitation; however, no compensation shall be granted for such exploitation of an invention, unless the Court has found that it constitutes an infringement of the patent as granted, and on condition that the invention claimed in the patent is substantially identical to the invention claimed in the application published under section 16A;” (emphasis not in the original).

The above information is partial and incomplete. Each case must be consulted individually with an attorney and patent attorney. For more details, call: +972-3-9711013.