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Intellectual Property Law

I used a lawyer to apply provisional patent on Jan 13th 2015

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Hello I used a lawyer...
Hello I used a lawyer to apply for a provisional patent on Jan 13th 2015 and then I had contracted him to apply for a full US patent on Jan 13th 2016. However he has now said that the patent application was completed incorrectly as he was ill and that we have to file again but that I no longer able to use the provisional patent date. He has given me two options
1.File a PCT to cover me globally from the original date of filing which is seriously expensive
2. File a full US patent from today's date
We chose the second option and filed a US patent today as he said that if anyone filed a patent for my idea between Jan 13 2015-2016 that my provisional patent will protect me in a US Court and I can get this other person's patent revoked.
Could you please advise me if this is true
As he says I have until March 13 2016 to complete a PCT application for global patent security back to the origional date of Jan 13 2015.
Thanks
Submitted: 1 year ago.Category: Intellectual Property Law
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Answered in 5 hours by:
1/23/2016
IP Lawyer: Alex Reese, Lawyer replied 1 year ago
Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3,466
Experience: Experienced in intellectual property law
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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.

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IP Lawyer: Alex Reese, Lawyer replied 1 year ago

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.

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Customer reply replied 1 year ago
Alex thanks a million
Ill give you the 5 starts if you answer thisI have filed a US patent now Jan 23 2016, so that I can get Patent Insurance ASAPHowever this only offers protection from Jan 23 2016 and does not protect me back to the original date when I filed the Provisional Patent Jan 13 2015I know if I had filed a Global PCT it would have offered protection for 30 months back to the original patent protection date if I had not filed a US patent but now that I have filed the US patent, if I still file a PCT, will it offer the same protection.Thanks
Barrie
IP Lawyer: Alex Reese, Lawyer replied 1 year ago

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.

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Customer reply replied 1 year ago
Hi Alex,Thank you for your replyThe material in both the Provisional Patent (13 Jan 2015) and the new Full Patent (23 Jan 2016) is the same (i.e. no new material) so could you confirm the PCT will cover my ownership for this material back to Jan 2015.If the original Provisional Patent filing date is Jan 13 2015, is my lawyer correct in saying that a PCT filed before Feb 13 2016 will provide this cover for me.I tried calling you but as the country I am stationed - Bahrain is outside the US I cannot call; but I will pay you an additional $45 bonus for answering these questionsThanks
Barrie
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