Intellectual Property Law
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Answered in 22 minutes by:
4/1/2015
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 328
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
VerifiedYes, as long as the old provisional was not published by anyone (the USPTO will not publish it) over a year ago you can file a new provisional covering the "old" design and the new design.
All you lose is the priority date of the original application. Such will only matter if:
(1) someone has filed a patent application on a similar device during such year as the first to file (and maintain the filing date) wins the right to obtain a patent on a device;
(2) you or someone made the old provisional application public (more than a year before the filing date of the new application); and
(3) the device was used in public more than a year before the filing date of the new application to be filed.
And even if you lose patent rights in the old design you may still be able to obtain a patent on the improvements.
You will likely be OK.
If you have more questions, just ask.
All you lose is the priority date of the original application. Such will only matter if:
(1) someone has filed a patent application on a similar device during such year as the first to file (and maintain the filing date) wins the right to obtain a patent on a device;
(2) you or someone made the old provisional application public (more than a year before the filing date of the new application); and
(3) the device was used in public more than a year before the filing date of the new application to be filed.
And even if you lose patent rights in the old design you may still be able to obtain a patent on the improvements.
You will likely be OK.
If you have more questions, just ask.
No. There would be absolutely no value in referencing the expired provisional application - the Patent laws are very cold-hearted and could NOT care less why anyone misses the deadline for filing a non-provisional claiming priority to a provisional before a provisional expires.
I would submit the same exact application with new disclosure describing the improvements.
I would not mention the previous application in any way (assuming you are filing a provisional).
Now, when you file a NON-provisional, claiming priority to the provisional you are about to file, you have a duty to disclose known prior art. The previous application will NOT be prior art UNLESS you made the application public MORE THAN 1 YEAR to the non-provisional priority date (which would likely be the filing date of the provisional you are about to file).
Just remember, provisional applications are not examined so you can do just about anything you wish. Further, if "IT" is not in the provisional, "IT" is not covered/protected by the provisional. Consequently, if during the next year you develop yet another non-obvious improvement you need to file yet another provisional covering the non-obvious improvement (as someone could file first on such improvement and the fact that you invented it first is not important anymore in US patent law).
A non-provisional has three main sections: Drawings, Written Description, and Claims. And material can be moved between sections. So if something is in a Drawing that is not in the written description, that "something" can added to the written description without raising new matter issues.
And Drawings can speak 1000 words so just add all the drawing/figures of your invention that you can think of and for each individual component - draw a line to it and associate a number to the line so that each component is numbered. Then simply describe each numbered component in the written description.
Such is good enough for a pro se provisional. Now when it comes time to file the non-provisional, you should have a patent agent or patent attorney draft the application. No way a pro se inventor can draft good claims - just too much patent law to consider and patent validity is a minefield - one bad word and the patent may be worthless.
If you have any more questions please ask.
I would submit the same exact application with new disclosure describing the improvements.
I would not mention the previous application in any way (assuming you are filing a provisional).
Now, when you file a NON-provisional, claiming priority to the provisional you are about to file, you have a duty to disclose known prior art. The previous application will NOT be prior art UNLESS you made the application public MORE THAN 1 YEAR to the non-provisional priority date (which would likely be the filing date of the provisional you are about to file).
Just remember, provisional applications are not examined so you can do just about anything you wish. Further, if "IT" is not in the provisional, "IT" is not covered/protected by the provisional. Consequently, if during the next year you develop yet another non-obvious improvement you need to file yet another provisional covering the non-obvious improvement (as someone could file first on such improvement and the fact that you invented it first is not important anymore in US patent law).
A non-provisional has three main sections: Drawings, Written Description, and Claims. And material can be moved between sections. So if something is in a Drawing that is not in the written description, that "something" can added to the written description without raising new matter issues.
And Drawings can speak 1000 words so just add all the drawing/figures of your invention that you can think of and for each individual component - draw a line to it and associate a number to the line so that each component is numbered. Then simply describe each numbered component in the written description.
Such is good enough for a pro se provisional. Now when it comes time to file the non-provisional, you should have a patent agent or patent attorney draft the application. No way a pro se inventor can draft good claims - just too much patent law to consider and patent validity is a minefield - one bad word and the patent may be worthless.
If you have any more questions please ask.
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 328
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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