Should I abandon my provisional and start over?

Question

Situation: Filed my provisional 11 months ago. Rewriting to file as regular US and PCT applications. Pro se currently, may have pro bono help in a couple of months, for filing further claims in amendments.

Basically I've gone from trying to patent my idea, to patenting what I've actually invented. That's a huge difference.

So let's say you think of my provisional as a street. We start at Point A, go to B, or C, or both, to get result D. A then B gets you to D. A then C gets you to D. A then B and C gets you to D, but D is much improved.

So points B and C are actually cross streets with many variations. Start at point A, wander all over streets B and C, and get to D. That's what my provisional outlines.

I've come to realize that Point A is actually a roundabout connecting to many streets. So there are a lot more possibilities involved. Rewriting my patent app focusing largely on Roundabout A would give me greater coverage.

Basically my provisional covers maybe 10% of the territory that I should cover in my regular US and PCT applications. The new application would cover the old info (in the previously filed provisional), but also is wholly new approach basically.

Do I do a rush job in the next couple weeks on my regular app, keeping my provisional as priority, and hope to amend with professional help later?

Or should I just buckle down, spend a couple months writing a whole new patent app, possibly with professional help, and losing the priority date of my existing provisional?

Is it possible that I can file a copy of my existing provisional today, and use today as my priority for a regular patent application later?

Answer 1

Do I do a rush job in the next couple weeks on my regular app, keeping my provisional as priority, and hope to amend with professional help later?

It is especially common for the ideas in a provisional to be developed significantly over the year. Indeed, that is one of the purposes of having a provisional application available. So there is no problem with having the non-provisional a lot more detailed than the provisional.

The key advantage of continuing is that you would maintain your earlier priority date. While some of the expanded embodiments may not be entitled to that earlier date (depending on how far they deviate from your original description), at least the core likely would. This may save you from prior art which has arisen over the last year.

However, once you file a non-provisional or a PCT, you will be significantly more limited in the amendments you could make. While you can generally amend the claims, you wouldn't be able to introduce new description or drawings. So professional help could only take you so far.

Should I just buckle down, spend a couple months writing a whole new patent app, possibly with professional help, and losing the priority date of my existing provisional?

The key advantage of this is that you won't be rushed in preparing the application. A couple of months seems inordinately long to draft an application (though I appreciate a non-provisional will have a much harder time of it).

The key risk is that prior art in last year will stand in the way. You may want to satisfy yourself that this is not the case, before you decide what to do.

Is it possible that I can file a copy of my existing provisional today, and use today as my priority for a regular patent application later?

Yes, this is not an uncommon thing to do. But you should withdraw your existing provisional before re-filing it. If you fail to do so (that is, you re-file before withdrawing), your re-filed provisional will not be able to be used as a priority document in a Convention application.

Is there another alternative?

Why limit yourself to a single application?

You could continue with your original provisional (with a view to protecting the overall arrangement). You could separately file a new provisional based on "roundabout A" which stands alone. This would seemingly give you the best of both worlds: you get your earlier priority date, and also protect your additional developments.