Legal Question in Intellectual Property in California
Provisional patent application question
About 2 years ago, a friend of mine filed a provisional patent application, and according to him, it was not supposed to be published. For some reason, he did not file a full application, and, as I understand the situation, the provisional application was abandoned because he did not file a full application within a year of filing the provisional one.
He now claims that his new lawyer has told him that, since he has not sold, disclosed, etc., the idea behind the original application, he can file another application over the same material. I am a bit confused - can an application be ''abandoned'' and refiled at a later date as a new application, or, once the material has been submitted as any type of application that becomes abandoned, can it ever be refiled on? He is asking me to invest money once an application is filed and he can tell me more about his idea; can he even get a patent, though, under these circumstances?
1 Answer from Attorneys
Re: Provisional patent application question
In general terms, so long as the inventor �has not sold, disclosed, etc.� the invention and largely treated the invention as a trade secret, he can refile the patent application. While most countries require no public disclosure of the invention prior to applying for the patent, in the US, the inventor has one year from the date of any sale, offer for sale or public disclosure to file for the patent, even if a previous provisional application was previously abandoned. There are a number of strategies and pitfalls to refiling the application in which a patent attorney should review the specific facts.
One such pitfall is the danger of intervening rights. In other words, someone else unrelated to the inventor may come up with a similar invention that is publicly disclosed and/or issues as a patent. This activity with the similar invention may then intervene with the inventor�s patent rights to limit the scope of his/ her patent rights or to bar the patent in its entirety.
Regards,
Don Cox
Related Questions & Answers
Looking for something else?
10,200 active attorneys ready to answer your legal questions today.
Featured Attorneys
Earn additional revenue and grow your business.
