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Can provisional applications be sold/assigned?

I don't just mean in theory, but is buying provisional applications something that companies do?

I'm not asking about "suing the Goliath", but rather assigning the application to their competitor as a BATNA.

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It is not unusual for companies to buy the rights for inventions that are not patented, including those that appear in one or more provisionals or in pending non-provisional applications. Similarly, it is not unusual for a VC firm to appraise a portfolio of provisional applications for investment purposes, i.e., to buy shares of the company owning the applications for the purpose of financing the filing of one or more non-provisional applications.

A random provisional application, by itself, has no inherent enforcement rights but could certainly be used as evidence of relevant prior art, were it to become "published" by its owners or if the disclosed invention were offered for sale or used in public, etc. If a company buys it, they may also reference it for priority (in a CIP or new application) for the invention as disclosed, or may take steps to suppress any further disclosure, under some NDA clause of the contract.

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My understanding is that provisional applications can indeed be assigned, but that the costs of handling and recording the assignments cause in some inventors to hold off until the filing of the formal application.


Regarding your example, this is a very complex question involving a lot of variables.

If your provisional is in fact the same thing, you may have some leverage, but litigation is enormously expensive. Companies will usually settle, but that would be contingent on your ability to pursue litigation in the first place. (Many lawyers will work on contingency basis, but there has to be enough money involved to make it worth their while.) If you're a David going up against a Goliath with deep pockets, this could be difficult. If they were unwilling to deal based on the provisional, you'd have to file a nonprovisional and secure a grant.

  • To clarify, I'm not asking about "suing the Goliath", but rather assigning the application to their competitor as a BATNA. – MaxB Aug 23 '16 at 20:55
  • That sounds quite promising. Can't hurt to approach them. How long do you have before the provisional expires? – DukeZhou Aug 23 '16 at 20:56
  • You have 12 month. You should talk to a lawyer first. If the company makes agreement with you, but fails to file a formal application, and then refuse to honor the agreement, you could be in a very difficult position. – daniel Aug 24 '16 at 2:15
  • @daniel makes a very good point. The provisional is nothing but a placeholder to allow you to gauge the market viability of you product or process before spending a lot of money on the nonprovisional. Design patents are fairly cheap; utility patents can be quite expensive, particularly if you wish to pursue internationally. – DukeZhou Aug 24 '16 at 2:19
  • @daniel are you saying that provisional applications themselves cannot be sold? (it would then be up to the buyer whether to pursue it further) – MaxB Sep 28 '16 at 19:46

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