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I have a patent application filed for a provisional somewhere last year, say, on March 01 2016. This provisional application had an element A which when placed on one area of element B resulted in result C.

This year, before the end of 12 months, the inventor wants to file a non-provisional. However, this time his invention has multiple element A but placed on more than one area of element B using same mechanism but now resulting in results C, D, E.

The provisional never had a claim part but we were specific about one element A. Now I would like to extend it to elements A, B, C placed on multiple area of element B to result in C, D and E.

My questions are:

  1. Will new elements B,C be a dependent claim based on previous provisional application?
  2. If patent granted, when will life period of invention A start and when will life of invention B,C start?

Also, generally, when does the life of a utility patent (20 years) start? Is it from the 1st filing date (Provisional/PCT/equivalent foreign application in last 12 months) or fromthe 1st effective filing date (application with claims) or from the date of USPTO publishing the invention?

  • When you say "Inventor's prior invention application", do you mean the provisional application? – Maca Jan 17 '17 at 3:24
  • yes, it is a provisional application. – KSR Jan 17 '17 at 3:26
  • I have made a few minor edits to your question to make this clear, though please do rollback if I've gone too far. – Maca Jan 17 '17 at 3:50
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Will new elements B, C be a dependent claim based on previous provisional application?

This question appears to mix a few different concepts, all of which use the word "claim" but in different contexts. In particular, "dependent claim" (which relates to claim structure) doesn't really mix well with "based on a previous provisional application" (which relates to priority).

A Convention application in one country claims priority to an earlier-filed application (which may be a provisional application) in a different country.

A US non-provisional application claims the benefit of an earlier-filed US provisional application.

An application or patent has claims which define the scope of the protection sought. Some of these claims can be dependent claims (which means it incorporates all the features of another claim). Each claim has its own effective filing date, which is the earliest date it is fully disclosed.

So splitting your question into its two parts.

Will new elements B, C be a dependent claim?

This is up to you, depending on what your independent claims are.

Will new elements B, C have an effective filing date based on the previous provisional application?

Elements B and C were not disclosed in your provisional application. A claim that included these elements would therefore likely not be entitled to the effective filing date of the provisional application.

Instead, these claims would have the effective filing date of your non-provisional (or Convention) application, which is when elements B and C were first described.

If a patent is granted, when will the term of invention A start and when will the term of invention B, C start?

This also mixes two different concepts: an invention does not have a patent term: a patent has a patent term.

Assuming all renewal fees are paid, a patent (which originates from a non-provisional or a Convention application) has a term of 20 years from when that non-provisional or Convention application was filed. This does not change even if there is a claim to priority or the benefit of another earlier-filed application. That is, the term does not start from the filing date of the provisional or any other priority filing. Nor does it start from publication.

  • "a patent has a term of 20 years from when it was filed as an application." What application is this? NP, Prov, PCT or any filed patent application for the invention? – KSR Jan 17 '17 at 4:02
  • @reindeer The non-provisional or convention application has a term of 20 years from when the non-provisional or convention application is filed. A provisional sort of has a 1 year term. A PCT sort of has a 1.5 year term. I'll revise the answer to make this clearer. – Maca Jan 17 '17 at 4:04
  • thank you @Maca. Can we consider a scenario here, wherein, for utility patent invention "1001", provisional was filed on 1 Jan 2015, NP on 31 Dec 2015. When will 20 years life period of patent invention 1001 begin? For utility patent application "1002", a foreign equivalent was filed on 1 Jan 2015, and it entered national phase on 31st Dec 2015, - when will 20 years for patent "1002" will start? – KSR Jan 17 '17 at 4:15
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    @reindeer 1001: 31 Dec 2035 (20 years from filing of non-provisional, since the provisional filing date doesn't matter). 1002: 1 Jan 2035 (20 years from 1 Jan 2015, assuming it is a PCT application, since otherwise "entering national phase" wouldn't make sense). You might want to ask a separate question for that though, since it's a bit too intricate for a comment. Or consider patents.stackexchange.com/questions/13056/… which I just put an answer to. – Maca Jan 17 '17 at 4:44
  • than you @Maca. so if I was to rephrase - 20 years life of an invention begins from the date of it's non-provisional application, but it's royality period begins from its first filing date of PPA, equivalent foreign PPA, given that the PPA/equivalent PPA later gets granted. – KSR Jan 17 '17 at 5:00

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