Intellectual Property Law
Intellectual Property Law Questions? Ask a Lawyer
hello. well there are a lot of issues at work here, those statements are an over-simplification and confusion of many issues. (1) a provisional patent application (PPA) never matures into a patent and never provides "protection"...it can only give you a priority date to support a later-filed utility patent. so a PPA cannot be said to really "protect you in Court". You cannot enforce a PPA....so it's no good in court or any other scenario unless you are merely trying to establish that you had possession of the disclosed subject matter at the time the PPA was filing...but nothing more. (2) during the normal examination process the PTO will locate and cite prior art against the patent application, including your PPA...so your PPA could be cited as prior art against their patent application, to the extent that the material in the PPA is also in your recent patent application. If the PTO does their job then the patent will never be granted if your PPA anticipates it or renders it obvious, but that depends on how close they are.....however, if their patent is granted it will be very costly to invalidate it.
it is debatable whether a PPA can serve as prior art, since it is not published....but if the PPA was never converted to a utility patent, then I doubt it could be relied upon for prior art. So while this is all hypothetical anyway, I would not count on that expired PPA doing you any good.
Yes it will for the material in the Jan 2016 application, but you won't be able to go back to the provisional patent date for the new material, only the the material that was in the provisional. I recommend you consult with a patent attorney in person because these are complex issues and you will need a patent attorney ASAP to make sure you do not miss any deadlines and take the right steps.