Patent Attorney and Founder
Question
I have an idea I’m planning to submit a provisional patent application for. I’ll be working with a patent attorney—good for me! It’s for a clothing design. I did a quick search and didn’t find anything similar in patents, applications, or commercial production. However, the space I’m in is growing, so I’m concerned there might be unpublished applications out there. My question is, is there a way to search for provisional applications before they’re published? If I move forward with the provisional application and start prototyping, what happens if someone has already filed a similar design before me? Will I get into a legal battle?
Answer
JD: Great question! I love it. Here’s the deal: when a patent application—whether it’s a provisional or a utility (non-provisional)—is filed, it’s not published right away. It remains unpublished for 18 months after your original priority date. So, during that year and a half, any prior art or previously filed patent applications aren’t accessible to the public.
JD: Now, you asked about searching for provisional applications. The only way to see those before they’re published is if you’re a USPTO patent examiner. I know it sounds funny, but it’s true. Examiners might look at a provisional application if there are two nearly identical patents submitted. They’ll check if the provisional fully enables the eventual non-provisional and if the subject matter aligns. In a first-to-file system, if the applications are independently derived—meaning neither inventor learned from the other—the patent is awarded to the first filer. That’s where a priority battle, or what used to be called an interference hearing, could come into play.
Matt: Is that what an interference hearing is?
JD: It used to be called that, but the America Invents Act changed it. Interference hearings determined who invented it first, but that system is gone now. The focus is on who filed first. There could still be a battle at the Patent Trial and Appeal Board (PTAB) if someone argues that the earlier filer derived the invention from them. This could happen under an NDA or after a public disclosure if someone claims the first filer defrauded the patent office.
Matt: It’s important to note that this system is different from trademarks, where it’s still first in time, first in right.
JD: The policy behind this change is that we want inventors to act quickly and not sit on their ideas. The goal is to make information available as soon as possible to benefit society, which is why the patent office offers a limited federal monopoly in exchange for sharing the invention.
Matt: So, if I file a provisional patent application, do I receive an application number, and can I legitimately say “patent pending”?
JD: Yes, absolutely! As soon as you file the provisional application and receive the electronic receipt, you can claim “patent pending” status. It gives you the same status as if you filed a full non-provisional application.
Matt: Having “patent pending” on your product provides notice for potential damages.
JD: If someone rips you off after seeing your “patent pending” status, they could be liable for treble damages (triple damages), which can be a significant deterrent.