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Let's say I file a US provisional on 6/1/21.

On 5/1/22, I file a PCT in the US receiving office that claims priority to the provisional filed on 6/1/21.

On 12/1/22, the PCT application is published, around 18 months after the date of the provisional filing.

Is the US provisional now also published or otherwise made available? If I go to Patent Center, not signed in, and go to the page for the provisional, should it be visible?

US law is clear on this question. For example, 35 U.S.C. 122 says:

. . . (2) EXCEPTIONS.—
        (A) An application shall not be published if that application is . . . 
           (iii) a provisional application filed under section 111(b) . . .

Is there any exception to this written into the PCT Treaty or Rules?

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  • I’m not an expert but this link seems authoritative: neustel.com/provisional-patent-applications-published/….
    – Eric S
    Nov 29, 2023 at 21:30
  • Thanks, @EricS. I agree that the US rules seem to be pretty clear on this subject. Here is a perhaps more authoritative reference: uspto.gov/web/offices/pac/mpep/s1120.html
    – jordanpg
    Nov 29, 2023 at 21:43
  • Feel free to answer your own question. That is encouraged.
    – Eric S
    Nov 30, 2023 at 3:34
  • Sorry, I meant that the question relates to some kind of PCT mechanism. I agree that there doesn't appear to be any ambiguity under US law. Edited to make this clear.
    – jordanpg
    Nov 30, 2023 at 13:45

1 Answer 1

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One issue is semantic - US provisional applications are not considered published but they are made available to the public by the USPTO to see when a corresponding non-provisional application or issued patent is published.

iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent.

Separately, the PCT process requires the applicant to file a publicly viewable copy of any application relied on for a priority claim. It must be a copy certified by the original office it was filed with.

Any other set of rules would leave the world (including other patent offices) unable to judge the value of the priority claim. Is some purported prior art knocked out by the content of the provisional or not?

Regulations under the PCT Rule 17

The Priority Document 17.1 Obligation to Submit Copy of Earlier National or International Application (a) Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed (“the priority document”), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs (b) and (b-bis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date,

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  • I don't see where this implies that such priority documents are made public, in the US or anywhere else.
    – jordanpg
    Nov 30, 2023 at 20:28
  • With regards to your other point, people cannot judge the priority claim in the US for normal US filings because provisionals are never made public. Why would it be any different for foreign filings? Foreign offices are clearly trusted with confidential material other than provisionals, so why would those specifically need to be made public?
    – jordanpg
    Nov 30, 2023 at 20:30
  • With some exceptions, patent prosecution happens entirely in the public eye. You can see all of the correspondence between the applicant and a patent office, possibly slightly delayed. There can be phone and in-person meetings with examiners that are not transcribed and the US has an option (qunder certain conditions) of keeping prosecution confidential if and until a patent is issued - then the history is opened up.
    – George White
    Dec 2, 2023 at 1:01
  • Provisional. applications are made public. See text from CFR 1.4 added to my answer. It would defy logic to have a document, the contents of which was key to understanding if a patent was valid, be unavailable to the public. The USPTO's terminology that this access does not constitute "publishing" generates your confusion.
    – George White
    Dec 2, 2023 at 1:09
  • OK, so the full answer is found under 1.14(a)(1)(iv) and (v). When benefit is claimed, under (v), before the provisional expires (which I guess is synonymous with "abandoned" in this context), the provisional is available upon written request and payment of a fee. Under (iv), when the provisional expires, the provisional "may be made available to the public," which apparently means publicly posted to the Internet. To my eyes, "may be made available to the public" is not the same as "provisional applications are made public," so this is surprising.
    – jordanpg
    Dec 2, 2023 at 16:06

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