1

I filed a provisional utility patent less than a year ago. Since then, I received a few notices which I did not follow up on, and the application was abandoned.

I think I have two options now, which are to either try to revise the original, or file a new one. The advantage of filing a new one (with the same claims), would be that I would secure the current filing date, and have a year from now to follow up on the non-provisional. If I revised the old one, I would only have a few more months to finish the non-provisional (a year from the original filing date).

If I were to try to abandon the current application, and start a new one, would my original provisional application count as prior art; invalidating the claims in the new one? Curious if there are any other gaps in my understanding, as well.

Thank you!

Improve this question
3
  • 1
    My understanding is no, because your provisional application has not been published, it wouldn’t be available to the public, so it can’t be prior art.
    – Howlium
    Sep 23, 2021 at 22:01
  • It is very rare for there to be any notices regarding a provisional other than fee related. Can you tell us what the notice you ignored said?
    – George White ♦
    Sep 23, 2021 at 23:02
  • If revivable (a big if) the advantage is you keep the original filing date.
    – George White ♦
    Sep 23, 2021 at 23:48

1 Answer 1

Reset to default
2

It is hard to fit the scenario in the question into my understanding of the U.S. patent system based on the question as first presented. It is rare that provisional applications lead to any notice of fixable problems other than fee shortages. I have seen one document that was filed pro se as a provisional that was not given a filing date and returned as not having sufficient content. I’m sure that is rare.

If your application was not published by the USPTO and not disclosed by you then it did not create any prior art. You can file all over again and get a new provisional date. However you need to understand what went wrong the first time. If it was content related you need to beef up or otherwise modify your submission.

On the other hand, if it really is revivable without adding new matter you might consider doing that to retain the initial filing date. If "fixing it" requires anything besides bureaucratic efforts, you lose the original date since the material was not all there on day one. Provisionals can't normally be amended.

If it is just a fee issue and it is revived, the benefit is that someone else may have published or filed in the interim and the other person’s work would be prior art if you start over. Getting that benefit requires that your original filing had sufficient content to cover the third party’s disclosure.

A few months should be sufficient time to have a non-provisional drafted and filed.

Improve this answer
2
  • Thank you this answer is absolutely illuminating. I found the document and apparently I did not attach a cover sheet. I am going to try to figure out if they in fact did publish it, but I doubt it given that it was incomplete (?). Thank you so much!
    – nikk wong
    Sep 24, 2021 at 20:29
  • Provisional applications - assuming it was viewed as a provisional - are not published, period.
    – George White ♦
    Sep 24, 2021 at 21:40

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .