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If my lawyer is currently doing a patent search to determine whether or not I should go forward and spend $10,000 on the application, how can he discovered patent pending applications that are not yet published?

Or is this just part of the risk?

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They can’t see it and neither can patent examiners. There also might be someone working on the same invention who hasn’t filed yet but files the day before you do.

And the definition of “published” in U.S. patent law includes a thesis sitting on a shelf in a university library (in any language, any where, written any time) that has never been checked out, as long as it is indexed by subject rather than authors name.

The process of examination takes time most of it queue time. An earlier application might not be published while you are searching but has a good chance of being published before your application is actually examined. In that case the examiner will find it and your later filed application will be rejected.

If yours was expedited, either by paying money or due to age, etc. Yours might be examined before the earlier one is published, that is when you might an allowance that was not deserved.

Publication occurs at 18 months not one year.

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  • What happens in such a situation? Does the early filer invoke PTAB to invalidate the late filer? Aug 26, 2022 at 17:21
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    See my edits to the answer. The PTAB IPR process is available to anyone trying to get a patent invalidated. It costs on the order of $100,000. However if the later filed application is granted while the earlier one is still unpublished )can occur if the later filed one is expedited) the later filed application will be of little value to its owner since any action initiated by the owner can be defeated by the earlier publication. That is assuming the inventions are clear cut for the same subject matter.
    – George White
    Aug 26, 2022 at 19:56

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