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Lets say I file a provisional patent at December 2020 with claim A. Some company B decides to file a application for non provisional patent with the same claim A at January 2021, because my 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 June 2021 i want to turn my provisional patent into non provisional patent since the one year window is soon expiring.

Could i still file a non provisional patent with claim A and still get it granted? 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?

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  • Surely this is theoretical since non-provisional patent applications typically take 3 years or more to get granted. Also, there is no such thing as provisional patents. Only provisional applications. – Eric S♦ Dec 9 '20 at 21:09
  • @EricS Under expedited examination or make special by age it is not unreasonable to get a patent issued in a year or less - from PatentlyO U.S. Patent No. 10,285,922 (110 days from earliest priority to issuance). ... U.S. Patent No. 10,343,988 (111 days from earliest priority to issuance). ... U.S. Patent No. 10,336,689 (114 days from earliest priority to issuance). ... U.S. Patent No. 10,302,471 (116 days from earliest priority to issuance). – George White Dec 10 '20 at 2:07
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    @GeorgeWhite Thanks. None of my patents were expedited. Some took upwards of 5 years to issue. – Eric S♦ Dec 10 '20 at 2:50
  • @EricS - These are extreme examples. – George White Dec 10 '20 at 3:58
  • Thank you a lot for correction. I meant provisional application. So company B wasted a ton of money for non-provisional patent? How can i be sure that i don't waste money on provisional application since i cant see provisional applications of others. – Stejk Dec 10 '20 at 8:57
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I do not know the mechanics that might take place but the patent would not be enforceable in practice if it is clear that an earlier filed application makes it not novel.

Your question has an assumption that provisional applications are more hidden from examiners than a non-provisional application and that filing the non-provisional makes it findable. That is incorrect. All applications are un-findable until they are published.

The fact that you filed a provisional vs a non-provisional is not relevant.

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  • So, how can i be sure that i don't waste money on provisional patent application (fees and also drafting with specialists) since i cant se other PPAs? Same apply for non-provisional patent applications. I make patent search, with OK status, then i pay lawyer and draft application. 5000$ spended. Fill application, pay another $ and then USPTO tell me "Sorry but we have PPA with same thing in database". => $5000> wasted. – Stejk Dec 10 '20 at 9:36
  • As stated multiple times, for this issue there is no difference between the "hidden prior art" being a provisional application or a non-provisional application. It might also be an application filed in Argentina. The 18 month delay between filing and publishing creates a hole of possible prior art. This is a fact that everyone has to deal with. Actually, an applicant in the U.S. can file for non-publication and there might be a three year hole. – George White Dec 10 '20 at 18:05

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