Citing References in Provisional Patent Application

[Sam]

Hi Brad,

I understand that in case a person uses some material from other patents then it is necessary to cite references in a non-provisional patent application. However, I am not sure if there is a need to cite references in a provisional patent application since it will not be examined. Please let me know if citing references is mandatory or optional in provisional patent application when someone uses some material from other patents.

Thanks
Sam

[Brad]

Hi,

There is no rule or requirement that you have to cite or reference other patents (even in the non-provisional its not mandatory).   With that being said, you should not be copying/pasting text or images from other patents.  You can use them as a guide but you should try to re-word it into your own language. 

Many of the "old school" patent attorneys like to list and talk about other patents in the Background section of their patent but in all of the more recent training events I have been to this practice now seems to be frowned upon and is not done by many attorneys because:

1. Its not needed so why waste time/money doing it, and
2. It may be used against you either by the patent office or later in litigation

Its basically all risk and no reward. 

The only time I would cite a reference is if there was some well known technique that was too complex to explain I would simply cite the patent that teaches that technique instead of writing it all out myself. 

Thanks
Brad

[Sam]

Hi Brad,

Thanks for your kind response. I understand that ethically we should not use the exact same material contained in other patents.

Please let me know if the text and images inside patents are covered by copyright or not. In case the patent's material is not covered by copyright then will it be ok to copy and paste the text of an existing patent into some of the sections of a new provisional patent application without citing references.

Kindly help me understand the legal repercussions of the above scenario for the inventor in terms of denial of priority date associated with provisional patent application and plagiarism lawsuits. While providing your insights, please consider the fact that an inventor cannot submit Information Disclosure Statement with a provisional patent application that could help him in citing references regarding the existing patent whose material has been used.

Thanks
Sam

[Brad]

Sam,

In general most images and text in a patent are not protected but I have seen a few patents with copyright notices on them which would make those ones protected.  I am not sure how copying another patent would help or hurt your priority date so I don't know how to properly answer that part of your question.   I also cannot comment on the legal implications of violating copyrights as that would be "legal advice" which is not something we offer here.  You would have to ask a copyright attorney that question. 

Sorry I cannot help more but in general I think its a bad idea to copy images or text directly.  It would be best if you could try and re-word or modify them to make them your own.

-Brad

[Sam]

Hi Brad,

Thank you very much for your sharing your insights.

Thanks
Sam

[chickaholic]

Hi,

There is no rule or requirement that you have to cite or reference other patents (even in the non-provisional its not mandatory).   With that being said, you should not be copying/pasting text or images from other patents.  You can use them as a guide but you should try to re-word it into your own language. 

Many of the "old school" patent attorneys like to list and talk about other patents in the Background section of their patent but in all of the more recent training events I have been to this practice now seems to be frowned upon and is not done by many attorneys because:

1. Its not needed so why waste time/money doing it, and
2. It may be used against you either by the patent office or later in litigation

Its basically all risk and no reward. 

The only time I would cite a reference is if there was some well known technique that was too complex to explain I would simply cite the patent that teaches that technique instead of writing it all out myself. 

Thanks
Brad

OH NOOO...

I wasted my time in citing writing about other patents in my area, I wish I had read this before

[Brad]

You should be fine.  Many attorneys still like to reference old patents and in most cases it should not hurt you. 

[Bradley]

Hi Brad,

I'm "Brad" also. I just stumbled upon your site and want to thank you for sharing your knowledge.

Along the lines of this thread, I have a followup question about citing other, previous work in a PPA. I am currently drafting my first PPA and to ensure my invention is credited with being useful and non-obvious, I was planning on citing other products that have some similar traits, but are not combined or used how mine will be. There are no patents that I've found that cover my invention or that are similar, but there are commercial products that combine different elements of it; however, they are intended and used separately and in/for a different context, setting and purpose. I have drafted out a few points that discuss the similarities of these products, the components that are similar, but also how they are different in purpose, intent and practice. Basically, in terms of "prior art" how these are different from my invention.

Is it a good idea or practice to include these "prior art" products similarities and differences in my PPA or should that be avoided until I file a full non-provisional patent application?

Any thoughts, advice or tips are appreciated. Thank you,

Brad

[Brad]

Hi,

I don't really see any "advantage" in doing this and by putting on the record things that your invention has in common with those other products may actually come back to hurt you, so, my advice would be to not include those.   

Use the "Background" section to just write one or two paragraphs about the problem your invention solves and leave it at that.  No need to go into detail about related products.

Thanks,
Brad

[Bradley]

Thank you, Brad. I appreciate the information.