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Ask Alex Reese Your Own Question
Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3424
Experience:  Experienced in intellectual property law
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I have an invention, let's assume it is a new type of

Customer Question

I have an invention, let's assume it is a new type of nozzle for pumping fuel that enables you to pump fuel at a faster rate. I filed a provisional patent for it 6 months ago titled "Fast fuel pump dispenser". But last week, I just found out that the same
nozzle can be used as an ice cream dispenser, a totally different application. Should I add that to my current provisional application or do I file a new provisional patent for an ice cream dispenser. If I add it to my current provisional, my patent application
would be discussing two entirely different concepts. Is that correct? In summary I have one invention but two entirely different applications.
Submitted: 12 months ago.
Category: Intellectual Property Law
Expert:  Alex Reese replied 12 months ago.

hello. you cannot add anything to a provisional patent application (PPA) so that eliminates that option. You have to file a new PPA or utility patent.

Customer: replied 12 months ago.
if I file a new PPA, should I file one PPA, describing both vastly different applications of my invention. Or should I file two PPAs, one for each application of my invention.
Expert:  Alex Reese replied 12 months ago.

well you already have a PPA for the first application, so no reason to repeat that. You just need to file a new PPA with the ice cream dispenser application.

Customer: replied 12 months ago.
when I file my non-provisional in 6 months, do I claim both PPAs or just the first one?
Expert:  Alex Reese replied 12 months ago.

Like you mentioned, you probably won't be able to include the 2 applications in the same utility patent....you could have put them in one PPA, but when the Examiner examines the utility patent he will likely issue an "restriction/election" requirement that basically means you can't have 2 inventions in one patent and you need to pick one. If there is no structural difference in the 2 versions then you might get away with it, but if there is an important distinction then it won't work....I suggest consulting a patent attorney to decide whether its worth a shot, and you should use one any to prepare the utility patent. Do-it-yourself never yields good results in my experience, you need to let a professional handle it.

Customer: replied 12 months ago.
But if I file two different PPAs and subsequently two different non-provisionals for what is essentially the same invention, would that be considered double patenting?
Expert:  Alex Reese replied 12 months ago.

if they are sufficiently different then its not double patenting, and if they are not sufficiently different then they can be in the same application....so it just depends on how different the versions are for each application

Customer: replied 12 months ago.
Ok. Makes sense. Thanks.
Expert:  Alex Reese replied 12 months ago.

you're welcome, please rate me thanks

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