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Lets say John files a provisional patent at January 2016 with claim A. Some company B decides to file a non provisional patent with the exact same claim A at March 2016, because John's provisional is not searchable by neither the patent lawyer nor the patent examiner, so company B's non provisional patent application got granted.

Lets say at September 2016 John want's to turn his provisional patent into non provisional patent since the one year window is expiring and he finally finds enough money, but then he realized what company B has done.

  1. Could John still file a non provisional patent with claim A and still get it granted?

  2. If the answer is yes, does that render company B's non provisional patent useless? If yes, does that means company B just wasted a ton of money for nothing?

Edit: Assuming John is in the US.

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Because there are no claims in provisional patent applications, the scenario described could not occur.

Also, the non-provisional application filed by the company in March would not have been made public by September of the same year. John couldn't have known what the company was up to in the timeline given.

If you're asking which applicant has priority if a case of competing claims were to arise (which couldn't happen as described): John was first to file and establishes priority with his provisional app.

  • Thanks for the correction, so if John goes ahead and file the non-provisional with claim A that references some content of his provisional and render company B's non-provisional useless. Isn't it unfair to company B when they have no idea someone filed the idea before him? This is especially disastrous if company B is a startup and it's cash is limited. – user3667089 Sep 16 '16 at 16:14

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