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I have a quick question about patent applications. If you

 
Alex Reese's Avatar
  • Answered by:Alex Reese
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Customer Question

I have a quick question about patent applications.

If you file a provisional patent application how closely does it need to match the real patent application one would file within a year. In other words, if you make modifications or improvements in the 12 month period after filing the provisional are you able to include those into the regular patent application or do you need to file them under a different name?

 

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Country relating to Question: United States
State (if USA): Maryland

Submitted: 271 days and 12 hours ago.
Category: Intellectual Property Law
Value: $20
Status: CLOSED

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Expert:  Alex Reese replied 271 days and 8 hours ago.


Alex Reese : Hello
Customer :

Hello

Customer :

Does my q make sense?

Alex Reese : To get te filing date of the provisional Patent the material in the subsequent utility patent must be supported in the provisional, you could add detail but any new matter would get a new filing date
Alex Reese : But you never see any of this, it would only arise If the patent was in litigation
Alex Reese : Or if the examiner makes an objection during the prosecution of the patent, saying that there is new material not supported by the provisional that gets a new filing date
Alex Reese : So you can include the modifications but they may not be entitled to the earlier filing date
Customer :

Okay, so the provisional will be reviewed then, I thought it was kind of just a place holder that gets disregarded... Do you anywhere I could read more about this specific topic, like a specific doc at USPTO or something .

Customer :

I just want to know what the boundaries are here regarding supported by the PPA claims

Alex Reese :

no you are right, it is a placeholder and does not gets reviewed...BUT it could get reviewed at some time in the future if there is an issue/dispute as to whether all the material in the subsueqent utility patent is support by the provisional (And thus entitled to the provisional's filing date)

Alex Reese :

you need to have adequate description and disclosure in the provisional to support a filing date, you cannot add new material or significant details/descriptions/elements later on and still get the earlier filing date

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Category: Intellectual Property Law
Pos. Feedback: 98.9 %
Accepts: 2405
Answered: 7/8/2012

Experience: Experienced in intellectual property law

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