Does google patents update patent application publications that have been amended?

1

As the title states, does google patents update the patent information for applications that have been amended?

For example: I file a patent initially with X number of claims. It is published at the 18 month mark. Google patents picks it up and it is now discover-able via google patents. But then I amend the claims before examination. Will google update the claims?

XRRX

Posted 2020-08-22T05:51:20.503

Reputation: 37

Answers

1

NO

Google Patents and other sites that allow for searching patents show publications. Once published, a particular publication is a static thing - like a book. Following the normal course, patent applications are published twice, once at the 18 month point and then, if granted, in the final allowed state. That is what you see on patent search sites.

However, after initial publication the public can view all of the back-and-forth between the applicant and the examiner including rejections, arguments and amendments. You could piece together intermediate versions from that information. In the USPTO this is via the site PUBLIC PAIR. At the EPO it is the EP Register.

George White

Posted 2020-08-22T05:51:20.503

Reputation: 21 648

1Adding links would make this good answer even better. – Eric S – 2020-08-22T13:24:01.987

Thanks. And what if I requested republication? How long does it take? And would the re-published version be updated in Google patents? – XRRX – 2020-08-22T22:20:22.867

Why do you want republication? – George White – 2020-08-22T23:30:27.427

@XRRX As George White asks, why would you want to republish an application. Everyone knows claims change between application publication and patent grant. Sometimes there are several revisions. – Eric S – 2020-08-23T00:55:08.917

I do not know the OP's reason. People can do it to improve what is called "provisional rights". Nothing at all to do with provisional applications. In the case that a patent issues and an infringement is found, it is possible to get royalties back to the publication of the application under some circumstances. A key criteria is that a claim found infringed was present in the published application in substantially the same form. If you are aware of a potential infringer you might tailor claims to target their product put them on notice by re-publishing. A fairly sophisticated tactic. – George White – 2020-08-23T01:10:50.993

Since you didn't direct your comment to XRRX, I thought by commenting also it would ping him/her. Your last comment is very interesting however. – Eric S – 2020-08-23T01:16:45.967

Thank you both for your engagement with this question, George White makes an interesting and relevant point regarding provisional rights. The reason why I'm considering re-publication is because the patent application was initially filed on a pro se basis and the claims are malformed and weak but the invention is viable and has garnered commercial interest. I have formed a startup for commercialization and I'm seeking investment. Non institutional investors will view the state of current IP (on Google patents) hence, I am wondering if republication will update Google's records. – XRRX – 2020-08-23T02:43:03.227

I assume google patents and all other patent databases will contain any publication of a patent application. In any case it will be on the uspto site http://appft.uspto.gov/netahtml/PTO/search-bool.html. It sounds like you are talking to very unsophisticated potential investors.

– George White – 2020-08-23T17:30:07.680

Yes. As a startup raising seed capital, potential investors/non-institutional investors might scout my website and take a look at the IP very briefly on an easy to access database such as Google patents (basing decisions based on claims and pictures only). I want the claims to be professional. George White how much does it cost for a professional consultation with you? – XRRX – 2020-08-23T22:02:09.383

Fortunately I am now very retired. – George White – 2020-08-23T22:03:16.170

Well thanks for your time, I appreciated the thoughtful comments especially the one about "provisional rights". Enjoy your retirement. – XRRX – 2020-08-24T00:24:57.920