0

Base of problem

Let's assume timelines as follows. Application examiner just makes error during search. He didn't see that in their database there is provisional patent application for same thing.

Timeline/Problem 1

Timeline:

  • Jan 2018 - Provisional patent application - Company B
  • April 2018 - Non-provisional patent application - Company A
  • Jan 2019 - Provisional patent application transformation to Non-provisional patent application - Company B
  • April 2020 - Non-provisional patent granted - Company A (Examiner error)
  • April 2021 - Non-provisional patent NOT granted - Company B (Because of Examiner error)

Can Company B sue Company A? How can Company A defend yourself (Didn't do anything wrong, PPAs not publicized, examiner error)?

Timeline/Problem 2

Timeline:

  • Jan 2018 - Provisional patent application - Company B
  • April 2018 - Non-provisional patent application - Company A
  • Jan 2019 - Provisional patent application transformation to Non-provisional patent application - Company B
  • April 2020 - Non-provisional patent granted - Company A (Examiner error)
  • April 2021 - Non-provisional patent granted - Company B (Because of another Examiner error)
  • December 2021 - Company A produce product patented by their patent
  • March 2022 - Company B sue Company A for patent infringement

Can Company B sue Company A? How can Company A defend yourself (Didn't do anything wrong, PPAs not publicized, multiple examiners errors)?

3
  • There are ways to challenge a granted patent. You might want to review those options. – Eric S Dec 10 '20 at 15:13
  • So, Company A needs to pay another $3000 fee for challenging? Which will result in favor Company B because they was first-to-file. – Stejk Dec 10 '20 at 15:38
  • If you have the earlier priority date then you control the invention regardless of if the other party has a patent. You can sue them if they infringe whether or not they have a granted patent and you should win. – Eric S Dec 10 '20 at 21:29
1

It looks like you have not read the responses to your earlier similar question. Incorrect assumptions in the question -

  1. There is no such thing as a "non-provisional patent"
  2. Unpublished applications, whether or not provisional are not searchable by examiners.

To simplify your question. "What can happen if an examiner misses an earlier filed significant prior art?"

The earlier filed, but later examined, application will not suffer due to the earlier granted patent. Yes, that could result in two similar or overlapping patents.

The applicant of the earlier filed application can file an IPR (current fee to initiate $19,000) to try to invalidate the patent from the later filed applicant.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.