Repatenting someone else's dropped provisionals

Question

My question is, can anybody provide any part of the US patent law proving or disproving the statement that:

Dropped and unpublished provisionals do not impede novelty of other inventions?

And how about dropped but published provisionals for patents with priority date between filing and publishing of said provisional?

Example:

A provisional is filed and then dropped later, without beeing published.

Someone else files the exact same invention 2 years later (without knowledge of the other provisional).

Disclaimer:

Including a comment from olsonist about US patent law:

When you file your patent, you will sign the DECLARATION FOR UTILITY OR DESIGN PATENT APPLICATION. The first paragraph of this declaration says: I hereby declare that: (1) Each inventor's residence, mailing address, and citizenship are as stated below next to their name; and (2) I believe the inventor(s) named below to be the original and first inventor(s) of the subject matter which is claimed and for which a patent is sought on the invention titled. Do not lie on this form. It is a Federal offense. If someone else filed the provisional then you are not the original and first inventor.

The question is only about novelty and inventive step in this case or about unpublished provisionals beeing prior art, but the above should be remembered if using the question/answers as advice, as it's a very important point. However sometimes many or changing entities might have the right to apply for a patent on a given invention, so the case discussed here does exist.

Answer 1

The answer to this turns on 35 USC § 102(a), which reads:

A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

Section 102(a)(1) covers the typical scenario of a publication. When a patent application (or any document at all) is published, it becomes §102(a)(1) prior art as of its publication date. This section therefore does not apply to unpublished applications (whether provisional or non-provisional).

Section 102(a)(2) relates more to double patenting. The three requirements are:

• the claimed invention was described in an issued patent or an application published under §122; AND
• the patent or application names another inventor; AND
• the patent or application was effectively filed before the effective filing date of the claimed invention.

An unpublished provisional fails at the first hurdle: it is neither an issued patent nor an published application. It therefore cannot be regarded as prior art until it is published.

How about dropped but published provisionals for patents with priority date between filing and publishing of said provisional?

A published provisional application is prior art under §102(a)(1) (like any published document), as of its date of publication. However, it is still not §102(a)(2) prior art.

This is because a provisional application is never published under §122 (and therefore will never meet the first requirement above). This is clear from §122(2)(A) which provides:

An application shall not be published if that application is— ... (iii) a provisional application filed under section 111(b)

What about non-provisionals?

Once they are published (and not before, per the first requirement above), non-provisionals are §102(a)(2) prior art. However, they are prior art as of the effective filing date (not the publication date).

This has an interesting dynamic when paired with a provisional. A published non-provisional which claims the benefit of the provisional is §102(a)(2) prior art as of the date that the provisional was filed. This is because the effective filing date of the non-provisional is the provisional's filing date.

Answer 2

Why does it puzzle you? If it is not available to the public, it is not prior art.

I think relevant US provision is here (MPEP 901.02) https://www.uspto.gov/web/offices/pac/mpep/s901.html#ch900_d225b5_2caa7_e7

Notice that it only mentions printed or published provisionals OR provisionals that are publicly available because they ended up to normal filings, which naturally have publicly available file wrappers.

That is also the case for priority documents in general. You may see subject matter disclosed in a priority document and not being used in the filing of a PCT application. The priority document is available via the file wrapper on WIPO site, though, so in this case, yes, it counts as published disclosure.

You might be referring to the provision of the EPO, Article 54(3) EPC, which considers prior art relevant only for novelty, if the cited document is filed before a given effective (priority or filing) date, but is published only afterwards.

"Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art."

But in this case, the prior art to be considered must have been published.

Another issue which I can think of, but not relevant for novelty, is the priority claim. See below the wording of Article 4C from the Paris Convention:

"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."

This legal basis does not limit the requirement to publication, but to an act that ensures that there are no rights outstanding.

Do those provisions make sense to you? I think they set up a fair landscape.