In reference to the patent: US 2014/0091685.

I have a provisional application with the USPTO from 1994 for this invention which has been to market already. How is it that my initial invention has been allowed to be patented after the fact and sold?

While I know a provisional is does not grant me protection, the fact that this has been sold with this exact design excludes anyone from patenting it henceforth, correct?

I would like to speak with the person who is listed as inventor on this application.

1 Answer 1


A Provisional Application is not considered to be publicly disclosed, as it never published. Therefore, it cannot serve as Prior Art because it is not generally accessible. The Provisional is there as proof that you have created something novel in a particular area by a particular date, the Priority Date. If it had been a full application, it could serve as Prior Art.

You probably have a document somewhere that provides your Provisional Patent Number and Priority Date from 1994. That could be helpful in establishing that you were the First to Invent. In order to have been included as an inventor based on the Provisional Application, you would have needed to submit the full application within a year of your Priority Date.

Note that this application has not yet been granted. This means there is still time to collect Prior Art and challenge the patent by first collecting Prior Art as described here and then (or concurrently) submitting the Prior Art to the USPTO as described here.

If you want to contact the inventor on this application, you should be able to find the information using the instructions in this answer.

For your last question on novelty, I'm going to give you a qualified "yes", if there is Prior Art for everything in the application, then it may be enough to invalidate the entire application.

However, there several other important points to consider before you even think about contacting the inventor. First, the claims are the most important section to look at, and in particular, the independent claims. Even if the background and figures read almost identically to an existing design, it is possible to get novel claim language granted. Without seeing the Prior Art, I have no way of answering that question more completely.

Another thing to consider is that novelty is not defined as "every part of a claim must be novel", but also like "a novel combination of three or more existing things". You will want to have a very close look at the Independent Claims (Claim 1, Claim 10 and Claim 15) in this application. If an Independent Claim is invalidated, then all of its Dependent Claims will also be invalidated.

Applications are often rejected on first examination over claims that are too broad or obvious over existing Prior Art. The inventor has the ability to revise claims after a rejection through a series of Office Actions to attempt to work around the problems. This process may take years.

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