Q: Hi. I have found a guy who has a provisional patent on a device I was looking to manufacture.
He is 80 years old and never done anything with the provisional patent.
If he agrees, is it possible for me to pay him to assign a provisional patent over to me so I can run with it... or can that only be done on a fully issued patent?
A: A U.S. provisional patent application (PPA) never itself becomes a patent so the name is a bit of a misnomer. A utility patent application (UPA) can claim benefit of a PPA if the UPA is filed by the first year anniversary of the PPA.
In any case, a PPA can be assigned (bought) from the original owner/inventor, but be sure there's still time left on the PPA's one year life span. If the PPA's expired and there's no pending UPA, the underlying invention (and related commercial product) may be fair game.
As an aside, an expired PPA might be revived if its expiration was due to COVID-19: https://www.uspto.gov/sites/default/files/documents/Patents-Notice-CARES-Act-2020-06.pdf
It's advisable to discuss specific facts with a patent attorney to avoid patentability, assignment, and/or infringement issues.
A: Provisional applications expire after 1 year and are not examined. An applicant who filed a provisional application must file a non-provisional application within one year from the provisional filing to be entitled to the priority date of the provisional application.
You should find out when the gentleman filed the provisional application and, if it is still valid, request that he assigns it to you, and then follow up with the preparation and filing of the non-provisional application to seek patent protection.
Please contact me if you need more information or assistance.
Liliana Di Nola-Baron, J.D., Ph.D.
Attorney at Law
A: Some provisional patent applications are not likely to lead to an issued patent. Sometimes the provisional patent application does not have sufficient detail to support any useful claims. Sometimes the provisional patent application covers a new item but the differences between the new item and the prior art are so small that the invention would be considered obvious.
It is not a slam dunk that an unexpired provisional application will lead to any useful patent rights. Before I paid any significant amount to buy an assignment of an unexpired provisional application, I would consult with a patent attorney to see if you are buying a paper tiger.
I hope that this helps.
Kevin E Flynn
Bernard Samuel Klosowski agrees with this answer
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