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
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