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Seeking priority date by referring to your own provisional application, is it okay if your provisional has more "ingredients" included in the description of the invention, and you choose in your real application, to claim a system that "drops" some of the ingredients included in the description contained in the provisional application you have made?

In one case - the motivation may be to restrict the invention to a leaner core, leaving the "dropped" ingredients to become just parts included in possible embodiments.

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It is okay to have more ingredients in the provisional application and drop few ingredients from the complete application. There are no hard and fast rules which state that what appears in the provisional application should/must appear in the complete application. A provisional application is beneficial in setting a priority date for a complete patent application. Ideally, while drafting a provisional application one should ensure that the subject matter to be claimed by a complete application is “enabled” in the provisional application. Otherwise, a claim in the complete application that was not enabled in the provisional application but included in the complete application may not be entitled to the benefits of the priority date established by the provisional application. You may refer to the article at the below link to strategize your filing options: http://www.invntree.com/blogs/which-stage-should-i-apply-patent

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There is no need to have all of the provisional in the non-provisional and also you are not limited to what was in the provisional.

The only scenario where a provisional application becomes relevant is if, in the course of examining a non-provisonal application, a prior art reference turns up that was published before the non-provisonal filing but after the provisional filing. In that case you look at the provisional trying to find solid support for the claimed matter that is being knocked out by that in-between dated prior art.

  • Now for the case the regular application needs to draw from the provisional, can it e.g. drop a step included in the provisional disclosure? can it "turn" an optional step included in the provisional into a mandatory one and vice versa?? I think these are sort of the hard questions around it – matt Sep 17 '14 at 8:11
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    A non-provisonal application can get priority from any number of provisionals and one provisional can be referenced by any number of non-provisonals. If you change an optional step in the provisional into a non-optional step and the non-optionality of that step is the issue the intervening prior art teaches then the provisional will not have content to show you knew that at the point of filing the provisional. The take-away is file the best non-provisional and make the non-provisonal as good as it can be with your then current thinking. – George White Sep 17 '14 at 22:57

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