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17 months ago I filed for a provisional patent and approached a company the very next day to licence it.

They claimed they have a provisional on my idea and that they are working on it already, yet til date, I have not seen any published applications using this idea in a provisional taking priority from that company.

Considering if they had a provisional on my idea and they filed it earlier to mine they should have put it into a application by now and it must have been published (unless they abandoned it), correct?

Since my application is about to go public in a month, am I safe to assume that if nothing comes up in the next few days that this was a lie?

  • I'd recommend consulting with an attorney. If they never showed you their document, and haven't posted a "patent pending" notice anywhere, I'm not sure if you'd have liability for potentially infringing. But this is beyond my expertise, so don't take my advice on the matter, except in regard to consulting an attorney. – DukeZhou Nov 9 '17 at 21:29
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No, you can't safely assume this was a lie. First, US patent applications do not generally publish until 18 months after their priority date (so, for an application claiming priority to a provisional, 18 months after the provisional's filing date). Therefore, if the company had filed their provisional the day before yours, it would not yet have become public. In reality, the USPTO is often slow about these publications, and so applications are often not published until well after the 18 month mark.

Second, it is possible for an applicant to file a non-publication request with their application. In this case, the application is not made public until a patent is granted.

Also, you don't mention whether you filed a non-provisional application claiming priority to your provisional. Please note that, if you did not file such an application within 12 months of filing the provisional: a) the provisional will have gone abandoned at the 12 month mark, and so its priority date could no longer be relied on, and b) the provisional will not become public. (If you did file an application claiming priority to the provisional, it will indeed become available to the public some time after the 18 month mark.)

  • To be hyper-technical, "convert" is not the correct term for filing a non-provisional claiming the benefit of a provisional. There is such a thing as actually converting a provisional to a non-provisional. It is rarely done - In ten years of practice I have done it once. – George White Nov 14 '17 at 22:43
  • @GeorgeWhite Good point—I often say "convert" as shorthand, but it is not technically correct. I've edited the answer to correct this. – rhymes_with_dorange Nov 14 '17 at 23:31
  • @GeorgeWhite if we're being hyper-technical, the provisional is not "published" but may become "available" to the public once the citing non-provisional becomes published (either at 18 months or upon grant. Also, nothing prevents an applicant from re-filing an expired PPA. – Upnorth Nov 28 '17 at 1:38
  • @Upnorth While the company could refile the provisional, it would have a later date than user3658991's application (assuming that a non-provisional application was filed claiming priority to it). (As for the hyper-technical point, yes, that is correct.) – rhymes_with_dorange Nov 28 '17 at 6:00

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