Q: Can a provisional patent that was not followed up with a non-provisional patent be used to claim prior art?
I processed a provisional patent in 2003 and did not follow up with a non-provisional patent due to cost. I made several operational prototypes from 2000-2007 of this device. I did discuss concept with an associate of a company. I just recently found out that In 2008, this company was granted a patent for this device. My 2003 provisional patent has drawing and details very similar to 2008 patent by this company. I have a great deal of proof of dwgs, prototypes, emails, etc from 2000-2007. Can I challenge the 2008 patent?. I want to be able to sell my device as it was conceived and built long before 2008 patent was filed in 2006. What are my options?
A:
No. A provisional patent application that is not followed up with a non-provisional patent application is not published and does not result in a patent, and thus cannot serve as prior art against another patent case.
This is, unfortunately, a common problem. In your case, you cannot get a patent on your device claiming priority to your provisional patent application, because the provisional patent application lapsed. It is as if the provisional patent application never existed.
Further, you cannot challenge the other person's patent based on your filing of the provisional patent application. Your provisional patent application never resulted in a patent, and it was never published.
So what can you do? Well, if you published your invention in a trade publication, or on a website somewhere, such a publication could be considered prior art, thus possibly invalidating the patent.
The other alternative is to show that the other party learned about your invention and copied your invention, then you might be able to invalidate the patent. Unfortunately, you cannot do this in a derivation proceeding (see MPEP 2310) because you are not a patent applicant. You are going to have to show this in court.
Ahaji Kirk Amos agrees with this answer
A: What Peter said is true. I could not have said it better.
Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.
The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.
Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.
