Provisional Patent

[spring1984]

Jurisdiction

South Carolina

I understand the following for a Provisional Patent:
1. It's valid for 12 months
2. It is not examined by the US Patent and Trademark Office
3. Filing Requirements are much less strident and filing fee is much lower
4. It's confidential, that is, a provisional patent is not available to the public
5. Upon filing it's considered "patent pending"

A few questions:
a) Would it be correct to assume the US Patent and Trademark Office (hereinafter referred to as "the Patent office") would search their entire database including provisional patents when they review a specific utility patent?
Otherwise, it would be hard to fathom that the Patent office can protect the interests of provisional patent filers. Suppose, John's provisional patent is materially the same as the utility patent filed by Mary. John filed on September 2, 2021 whereas Mary files on May 12, 2022. When the Patent office reviews Mary's application, say, on December 21, 2022, the examiner has to be aware of John's filing and to reject Mary's filing. Yes?

b) What can I do to make a provisional patent application/filing by myself ( a non attorney ) to look like that prepared by an IP attorney?
In other words, how can I ensure it is of high quality, which can possibly maximize protection.

Thanks in advance.

 

[adjusterjack]

I guess you have such little faith in your product or invention that you want to patent it on the cheap and risk getting it wrong and losing any potential protection that you would have if you got it right.

Don't be penny wise and dollar foolish.

The way to have it look like it was prepared by an IP attorney is to hire an IP attorney to do it.

 

[Tax Counsel]

b) What can I do to make a provisional patent application/filing by myself ( a non attorney ) to look like that prepared by an IP attorney?
In other words, how can I ensure it is of high quality, which can possibly maximize protection.

You would need to learn patent law to the same extent that a patent law attorney does. Patent law is a very technical area and the patent application and examining process are very detail specific processes. Patent attorneys must pass a separate national exam — the Patent Bar — to be able to practice before the USTPO. No other area federal law has a requirement of a special national exam before attorneys may represent clients before a federal agency. Patent lawyers need to have a scientific background in addition to a law background to pass that exam. Patent applications, even provisional ones, need to be prepared properly or they are worthless and you just end up wasting your money at best and at worst end up giving away your invention. If you think you have a winning invention, see a patent law attorney for help in protecting it.

 

[flyingron]

Remember that just because a patent is issued doesn't mean it will be defensible when you try to pursue infringement actions. In fact, it's incumbent on the person filing the NPA to include the related patents (having conducted their own search). Again, patent filings, especially EFFECTIVE ones is a very specialized area.