Expired Provisional Patent

[RMontes]

A provisional patent was filed in 2008 and expired in 2009.  Can I now file for a patent on the same widget?  Not my idea, but have all the information on the widget.

[Brad]

No.  Only the first person to invent the idea can apply for a patent.  If you are not the original inventor you cannot file a patent on it.    Maybe you can work out a deal with the inventor to sell you his invention and then file in his name but you would own the patent.

[Learning_2_Patent]

My beginner understanding of a provisional patent, is that it only protects the invention for 12 months.
If the provisional patent expires, then it's considered abandoned.
To me that means that it's as though it was never submitted.
Your post is telling me that even though a provisional patent is expired, the inventor is still protected from someone else patenting it.
Are there any circumstances were the inventor could lose ownership rights of his expired provisional patent?

[Brad]

As long as the invention was made public prior to the second person filing for a patent then the original inventor should be protected from other people trying to patent it.  In a perfect world the patent examiner would find the first inventors publication or public use of the invention and then reject the person who later tried to file a patent.

If the inventor kept their idea secret and if someone else came up with the same idea completely on their own then in that case the first inventor would not be able to get a patent and the second person may be able to get a patent. 

*Note is this example the second person invented the idea all by themselves and they did not see or have access to the first invention. 

[js088]

Of course Brad is right on both counts.

Your post is telling me that even though a provisional patent is expired, the inventor is still protected from someone else patenting it.

Eh? Am I missing something? If the patent has expired then isn't it out in the public domain already? Perhaps you can file a patent on something in this domain that hasn't been patented yet.

[Brad]

If its a patent application that has not published such as a provisional application or a non-provisional application filed with a non-publication request then because those patent applications never published they are not in the public domain.

Here is an example:

Inventor A filed a provisional patent application on a new type of pencil eraser in 2009.  He gave up on the idea and never sold any or never made a public showing of it.  He also never followed up with a full patent application.

Inventor B discovered the same type of new pencil eraser a few years later in 2012.  Inventor B can file his own patent application because there is no prior public use or publication that the patent office can find to reject Inventor B's application.   (since the first provisional from Inventor A is not published it will not block Inventor B).

[js088]

Well in addition to the above here are some excerpts from USPTO website (of course exact rules may vary from country to country):

1. An applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. However, a non-provisional application that was filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition (including a statement that the delay in filing the non-provisional application was unintentional and the required petition fee) to restore the benefit under 37 CFR 1.78. So, the benefits of the provisional application cannot be claimed if the 12 month deadline for filing a non-provisional application has expired (unless the benefit of the provisional application has been restored under 37 CFR 1.78).

2. The provisional application must name all of the inventor(s). In view of the one-year grace period provided by 35 U.S.C. 102(b)(1) in conjunction with 35 U.S.C. 102(a)(1), a provisional application can be filed up to 12 months following an inventor's public disclosure of the invention. (Such a pre-filing disclosure, although protected in the United States, may preclude patenting in foreign countries.) A public disclosure (e.g., publication, public use, offer for sale) more than one year before the provisional application filing date would preclude patenting in the United States.

3. Beware that an applicant who publicly discloses his or her invention (e.g., publishes, uses, sells, or otherwise makes available to the public) during the 12 month provisional application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional application pendency period expires before a corresponding non-provisional application is filed. Such an applicant may also lose the right to ever patent the invention.

[Ashraf Alshaikh]

Hello
I have expired provisional patent under my name. Can you establish a new filing date and one year period for me?
How long it will take?
How much it will cost?
Appreciate your support.
Ashraf

[Brad]

Hi Ashraf,

You can only re-file your provisional patent application if your idea is either:
(1) Still secret, or
(2) Was made public or offered for sale less than 12 months ago.

If you can satisfy either items 1 or 2 from above you can likely re-file your provisional but there are some risks associated with this.  Here is my standard warning I send to people that want to re-file:


*WARNING - the risk of re-filing a provisional patent application again and again is that each time you start with a brand new filing date and you cannot link the applications together.  Most of the time this is okay, however, there are times when your competition may invent an identical or similar device and may be able to "jump ahead of you in line" at the patent office or possible block your patent from being allowed.  For example, if you filed your first provisional in March 2013 and it expired in March 2014 and your competition invented a similar device in April 2014 and started selling it online, then if we re-filed your new provisional application in June 2014, the the patent office could use your competition's April 2014 invention to block you from getting a patent because your filing date would be seen as June 2014 (i.e. after their invention).

One other risk is that if your idea was made public or offered for sale prior to us re-filing the provisional, you will probably lose the option to file in countries outside of the USA because they have more strict rules on "absolute novelty" when compared to the US Patent Office. 


We can sometimes file your provisional patent application "as is" without any review or input from us for a fixed fee of $250 + USPTO fees of $70-$140 for most people.   (note I am leaving on vacation through April 22, 2019 and will not be able to help you until I return).

Thanks