Current invention has been laid out on paper, but needs to be built and tested. Potential competitor in the UK is posting online about his similar ideas, and is probably a month away from coming up with the exact current invention, which he will probably post online, although he may not post it and instead pursue his own patent. My goal is to prevent him from making it unpatentable, or, to prevent him from patenting himself, such that it can indeed be patented by me when testing is completed.
If you publish now, you should be able to prevent the competitor from getting a patent on your invention.
If you want rights outside the US, you had better get a proper and complete application (whether provisional or real) on file before either of you publishes.
In the specific case that you have mentioned, it is impossible to claim [Paris] priority from any of the provisionals #1, #2 or #3, because the 1 year term for claiming priority has passed in case of provisional #1, and because provisionals #2 and #3 can not be said to be the first application for the claimed subject matter
Yes but wouldn't provisional #1 and #2 be considered abandoned, since they would not be referenced by the eventual NPA? (And I'm following that abandoned provisionals are not considered for prior art.)
I think bartmans might not quite be right in that assertion. If provisional #1 never serves as a right of priority to another application and is abandoned ("expired" more accurately, I believe) with no rights at all remaining, provisional #2 can be considered the "first" application anywhere in the world for the invention.
See
Paris Convention, Article 4(C)(4):
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
Oops, bartmans might be right, unless you expressly abandon provisional #1 before filing provisional #2. So many pitfalls in this business! Yet another reason to avoid playing with provisional applications, in my opinion. So many think that more provisional applications is better than fewer, and the whole portfolio becomes this unnavigable minefield.
Under your international scenario you have not lost patentablity even though you can not get priority under Paris as long a novelty has not been broken (may not be the same rules for this everywhere).
This makes more sense to me, and seems to somewhat contradict the previous statement. So my question becomes, if competitor posts it online, will my provisionals suffice in still allowing Paris patenting later when the invention has finished testing?
First, you'll have to have a proper and complete application on file (and not abandon it) prior to publication by anyone if you care about rights outside the US and a handful of other countries. For example, in your example, if your competitor publishes before you file provisional #2 (and I'm assuming your provisionals are written as well as non-provisional, real applications), you'll need to maintain the priority date of provisional #1 for rights outside the US.
Second, and more subtly, I don't see why you keep re-filing applications on the same invention. If the improvements are non-obvious, those can be separate applications for the non-obvious improvements. If provisional #1 is adequate to protect the basic idea, it should do. No need for provisionals #2 and #3.
In fact, it would be a good idea to make provisional #2 a real application claiming priority of provisional #1. You can include whatever improvements you've made by then in the real application. Claims supported by provisional #1 would be entitled to its filing date, predating any disclosures by your competitor. Other claims would have the effective filing/priority date of November 2011.
Regards.
Author
Topic: Clarity in provisional vs. publication (Read 3960 times)
