Commercial Use of Patent-Pending Claims in Marketing: What the Label Can Honestly Say

Introduction : Not many terms are more commonly associated with marketing teams than "patent pending". It costs you nothing to put it on your documents, makes it look as if you have legal protection, and conveys the impression of a novel development in your firm. The only thing that it implies is a straightforward one: an application has been made, but there is still no conclusion reached yet.

In this post, we explore what protection a pending application brings to a company in India and at which point the term becomes misleading. Accuracy, the application state, territory, misleadingly going towards granted rights, and the four common places where you will find the term - investor presentations, packing, product pages and distributor materials. We conclude with a simple procedure for getting the permission.

What a pending application gives you

There are three stages that an application goes through, which have been clearly outlined by the Calcutta High Court. The applicant, after filing and before publication, has only a position in the queue and nothing more. After publication and before grant, the applicant enjoys all the rights of a patentee other than the right to institute action for infringement. It is only after the grant that the complete rights come into existence, and they relate back to the date of filing.

The statute says the same thing. Section 11A(7) of the Patents Act, 1970, gives the applicant, from the date of publication, all the rights he would have had if the patent had been granted on that date, provided that the first proviso prohibits the institution of infringement proceedings till the grant of the patent. Publication also does not happen immediately. An application is normally published eighteen months after the date of filing or priority unless the applicant requests early publication, and a provisional application which is not followed by a complete specification within twelve months is deemed abandoned and is never published.

The hard reality is that on the day of the introduction of a product through a new application, there is nothing that the company can take against the copyist, and the company may not have any claim at all since claims could be limited, disclaimed or withdrawn during prosecution. "Patent pending" is a claim about an application at the Patent Office. It tells us nothing about the product or the competition.

Accuracy is a legal question

The "pending-patent" statement is an assertion of fact and must be true on the date each reader sees the statement rather than the date the copy was authorised. There are three Indian laws under which the law scrutinises such a statement.

First is the Patents Act. Section 120 provides punishment for any person who makes a false representation that an article sold by him/her is a subject of the application for the purpose of granting a patent in India and that it is deemed to have made such a representation in case the words "patent pending" or "patent applied for" are stated on the article. As of 1 August 2024, the punishment for this offence is up to ten lakh rupees, and a further one thousand rupees for each day it continues, imposed by an adjudicating officer.

Secondly comes consumer law. Under the Consumer Protection Act, 2019, an advertisement is considered misleading if it gives a false representation about a product or is capable of misleading consumers in regard to the nature, substance, quantity or quality of the product. The Central Consumer Protection Authority has the power to fine a manufacturer or an endorser with up to ten lakh rupees and up to fifty lakh rupees for a second offence, while section 89 further provides for imprisonment for up to two years if a manufacturer or service provider makes a false or misleading advertisement. The 2022 Guidelines provide that a valid advertisement should not be misleading and should have claims which are verifiable and that a disclaimer may explain a claim but not contradict it.

Third comes the courts. In Tata Press vs Mahanagar Telephone Nigam, the Supreme Court ruled that commercial speech is covered under Article 19(1)(a), but an advertisement which is false, misleading, deceptive or unfair is not covered. In Reckitt Benckiser (India) Pvt Ltd vs Hindustan Unilever Limited, the advertiser made claims that its toilet cleaner was made using unique technology protected by patent. The Delhi High Court called that a disputed question of fact which the advertiser would have to prove, and it still restrained most of the impugned advertisements at the interim stage.” “Almost all” overstates it, since the court refused an injunction against one of the five advertisements.

Status changes, and the copy has to change with it

Applications do not remain pending indefinitely. An application is considered abandoned if the applicant fails to have the application in order for a grant during the prescribed period and is considered withdrawn if there is no request for examination filed within forty-eight months from the date of earliest priority or filing. An international application having India as the designated country will be considered withdrawn if the national phase is not entered within thirty-one months from the date of earliest priority. This time limit has been held by the Delhi High Court to be mandatory. Refusal, withdrawal, and abandonment all terminate the pending status, and the term "patent pending" becomes false on that very day.

The following are two practices. Firstly, a patent application requires a date and an application number against it. An application that only states "patent pending" is not verifiable by anyone, including employees of the company. Secondly, the final patent may be more specific than the initial application. A copy made on the basis of the broad claims of the initial application may become inaccurate at the time the term "patent" becomes accurate.

Territory: pending where?

Patents are territorial. The Paris Convention considers patents filed in different countries as separate, which means that filing a patent in the United States does not give rise to a pending application in India. This is true even for the Patent Cooperation Treaty. An international application is only one application and not a worldwide patent, which becomes an Indian application only when it enters the national phase within thirty-one months.

This requirement is provided for under the Patents Act. As explained in Explanation 2 to Section 120, the term "patent pending" means "the application for the patent pending in India" unless there is any indication alongside that the application was filed outside of India. Therefore, the label "patent pending" on packaging sold in Delhi using a filing in the United States would be false labeling, while "US patent pending" would be correct and indicate to the consumer their rights. The same level of accuracy must be applied to investor decks. When a slide uses a world map to show protection based on one filing in one country, it is making a claim beyond what can be supported.

Words that imply a granted right

The threat is not in the term "patent pending” but in what builds up around it. "Patented technology," "patent protected," "proprietary design that cannot be copied," and "exclusive to us" all connote something granted. Under Section 120, the terms "patent" or “patented”, or any word indicating the grant of a patent, shall be deemed to mean that a patent has been granted in India. The selling point drives copy toward the powerful term; thus, the safest route is the direct one: say only what describes a filing, not what describes a granted patent.

Two other sections are also nearby. The first is section 111, which makes it impossible to seek damages or an account of profits from a defendant who shows ignorance of the patent and of the reasons for being ignorant of the same, while the explanation provides that a "patented" mark on the article itself without the patent number does not make the person aware. In this way, even after the grant of a patent, simply having a "patented" label will serve no purpose. The next one is section 106 on threats. It means that anybody threatening another by circular or advertisement or any form of communication to institute infringement proceedings is liable to suit from such a threatened person for a declaration that it was an unjustifiable threat, an injunction, and damages, whether or not he has obtained a patent or merely applied for it, since notification of the existence of the patent is not a threat.

Four places the phrase appears

The same words carry different risks depending on who reads them.

Investor presentations

By stating "patent pending”, an investor is informed of a statement of value of an asset. Mentioning "12 patents" in the deck when there are only twelve patent applications makes a statement of fact inaccurate. A representation of false fact in inducing an agreement is misrepresentation under the Indian Contract Act, which becomes fraud if the false fact is made with knowledge, and the agreement is therefore voidable by the investor. Furthermore, Section 447 of the Companies Act, 2013 punishes fraud in connection with the business of a company by defining fraud broadly to cover concealment of any fact with intent to deceive, regardless of wrongful gain or loss. The exemption contained in section 19 to the effect that one party may defend himself by showing that the other could have ascertained the truth through diligence is a legal defence, not a drafting tactic. List applications separately from granted patents, show filing date and jurisdiction, and state claims requested, not granted.

Packaging

Claim correction is most difficult to make in a pack. The pack exists for months and ships to various states, and once done, it cannot be corrected if there has been a change in the status. Any wording which comes onto the label or a wrapper put on the product becomes automatically subject to section 120; hence, the best way is to write the application number or a phrase like "Patent application filed in India". Always ensure the territory is clear and make plans so that any stock existing before rejection or abandonment may be repackaged or quickly sold out.

Product pages

Pages are easily amendable and hence easily forgotten. The claim is echoed by marketplaces, resellers, and price comparers who will not amend their copy regardless of any change in the status. Take each page as a living document, with one owner, a status date next to the claim, a territory indicator and a review schedule. If you are presenting your page to an Indian audience, the claim should have an Indian status.

Distributor materials

Distributors copy what is told to them and sometimes embellish it. Provide approved language and a single page describing what can and cannot be said, prohibit any additional representations, and insist on withdrawing old materials upon change of status. Keep enforcement language out of sales scripts. If a distributor says to a retailer that "look-alikes will be stopped by our patent," they may be carrying out the threat made by the company under section 106.

A claims-approval procedure

A procedure works better than a reminder. This one suits a small team and has seven steps.

1. Maintain one IP register. For each filing, enter the application number, date of filing, jurisdiction, status and a simple description of the claim. There is only one owner of it, normally IP counsel.
2. Maintain a list of approved claims with pre-approved languages for each status, like "Patent application filed in India" followed by the application number and date, or "Patent granted" with the patent number. Prohibit all other languages unless the counsel approves them.
3. Channel every new claim through a brief request that includes the channel, the markets and the exact wording.
4. Check four things: whether the claim is true, the territory is consistent with the market, the status language matches the register, and the copy does not imply a granted right or even enforcement.
5. Approve with an expiry. The approval expires upon any change in the status and, in any case, after six months.
6. Define the trigger for status change. A denial, an abandonment, a withdrawal or grant activates the recall list that includes the investor presentation, packaged stocks, website pages, marketplaces and distributors' packs with a person and a date for each one.
7. Conduct an audit quarterly by comparing the live content with the register and documenting the changes.

Conclusion

Pending application is something that is characteristic of the file, and marketing should remain at that level. Mention what was filed, when and where, reword the status when it changes, and reserve words like "patented", "protected" and "exclusive" for the rights that actually exist. The practice will pay for itself. Everyone, whether it's investors, regulators or competition, can verify the exact claim, and an exact claim is the only one that stands verification.

Author :- Sakshi Soni, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.