Expert: George H. Morgan, P.E., Patent Agent - 3/30/2011

Question
Hello George, welcome back!

I am planning to file a provisional patent within the next few months. I have not consulted an attorney yet but have done patent searches online and I am confident my idea does not infringe on anyone else's. I am wondering how common it is for the provisional patents to be granted, but then the following non provisional patent denied once they are examined when trying to take out  non provisional utility patent after the year of the provisional patent has expired. Does that happen often?
I am assuming that being granted a provisional patent is no guarantee the non provisional patent will be granted, is that correct? Are provisional patents examined thoroughly? How do they prevent the situation where a provisional patent is granted for something that is already patented by someone else?

Thanks and regards,
Eddie

Answer
Eddie, a provisional patent is not something to be "granted".

You fill out the "Cover Sheet" (download from the www.uspto.gov site), staple your $110 check to it, and include your description of your invention plus drawings to support your description.

You send it in, with your bounce back post card. You will get it back. A few weeks or more later you get an official receipt with (usually) permission to file foreign patents.  (If it is on an encryption device, or a better nuclear bomb trigger, you probably won't get the required permission. It is how our benevolent Uncle Sam tries to control security matters.)

When the USPTO gets your application, it is filed & forgotten, until you refer to it in a formal application. At that point they dig out your application, and you get the priority date on what was disclosed.

Rarely is a provisional "converted" to a formal. Usually, you will have improvements you will want to add, so the formal often is quite expanded from the provisional.

I highly recommend you peruse "Patent It Yourself" by David Pressman. It is available through your local free public library. Or any books tore will sell you a copy for approximately $42.
Or, better yet, Edward R. Hamilton, Bookseller, has a surplus of the thirteenth edition that they are selling for approximately $7.50. Also, Amazon.com & ebay have them for approx. $10.

Also, my website has a lot of free info. The book review page may have helpful texts, again, available through your local free public library.

There is also a link to the R.J.Riley web site, which lists some of the more eggrarious invention promoters, with appropriate cautions, such as Inventhelp, a subsidiary of Invention Submission Corporation, and many others.

Final comment: The House of Representatives is considering the Senate's version of Patent "reform". It basically is an assault on inventor's rights & all should contact their congressmen to protest it. It has also been called the "Full Employment for Attorneys Act". The most powerful corporations in the world are lined up against the inventors rights activists.

I do hope this helps you. Best wishes on your project.

George H. Morgan
Professional Engineer (since 1958)
Patent Agent (since 1973)
web site: http://www.evansville.net/biz/patagent