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I have two ideas completely different and unrelated to each other, I want to put both of them inside a provisional patent application and in a alter time file two non-provisional application for them. is it possible?

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Can I describe two different ideas inside a provisional patent application?

Yes. Indeed, you could do this in any application, whether provisional or non-provisional: there is no restriction on what can be described.

The restriction on multiple inventions is provided by 37 CFR 1.141(a), which provides: (emphasis added)

Two or more independent and distinct inventions may not be claimed in one national application…

Thus there is no restriction on how many inventions can be described, just how many can be claimed.

In principle, this might restrict a provisional from claiming multiple inventions. However, the consequences of claiming multiple inventions only arise during examination (per 37 CFR 1.142), so will never apply to a provisional which is never examined.

Does this affect claiming the benefit/priority?

No.

With regard to claiming the benefit of an earlier filing date, 35 USC 119(e)(1) provides (in a very long sentence, the bulk of which I have omitted):

An application for patent … for an invention disclosed … in a provisional application … shall have the same effect, as to such invention, as though filed on the date of the provisional application …

Thus it is irrelevant what is claimed in the provisional. It only matters what invention was disclosed.

Claiming priority in other countries is a little trickier, since that would really require a consideration of every country's laws. However, the Paris Convention art 4(A)(1) provides:

Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

All that matters is that the earlier application (such as the provisional) was duly filed. Of course, this provision does not explicitly mention that the invention must be properly described. However, that is the interpretation of "right of priority" at the time the agreement was made.

Can I file two non-provisional applications from a single provisional?

Yes. This flows from 35 USC 119(e)(1) quoted above. Each non-provisional is entitled to an earlier date based on any relevant provisional. There is no restriction on one provisional being used for multiple non-provisionals.

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YES! You can theoretically include as many inventions in a provisional application as you want. At the non-provisional stage, you can still include as many inventions as you want in the specification and drawings, but you can only claim one invention. In other words, the claims are only allowed to be directed to one invention.

However, if the filed claims do include multiple inventions, the Examiner will issue a "restriction requirement" and require the applicant to elect only one invention for examination. The non-elected invention(s) can be protected via divisional or continuation applications as long as such applications are filed before the original issues as a patent or goes abandoned.

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I have read somewhere that we can have multiple ideas inside a provisional patent but I can't remember where it was! I think I read it in "Patent it yourself".

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That sounds wrong, but I can't find anything that would disallow this.

Furthermore, rule 13 (PCT) and the wikipedia article https://en.wikipedia.org/wiki/Unity_of_invention

United States: In U.S. patent law, applications that claim more than one distinct invention may be subject to restriction to a single invention, and the applicant may prosecute the remaining invention(s) by filing a divisional application(s). A "restriction requirement" will typically present the different inventions based on the claims within the application, and the applicant may elect which invention he would prosecute.

don't mention anything against your idea. Wikipedia even says that after a finding of lack of unity divisionals can be filed. It should be similar for provisionals / non-provisionals.

There is this https://www.uspto.gov/web/offices/pac/mpep/s805.html for the USPTO, it says that lack of unity is not a reason to revoke a patent.

This article http://www.lexology.com/library/detail.aspx?g=6f660102-0df1-4422-81ec-2c34ddfb7560 says that unity of invention is only relevant in the claims and the description could describe multiple inventions. But again, unity seems to be relevant for searching and examination.

There is http://www.bitlaw.com/source/35usc/121.html §35USC/121 which says that divisionals filed from a patent application lacking unity are entitled to the priority date.

But of course normally this relates to similar inventions. I couldn't find precedence for what you are proposing.

  • What about priority? In other words, is it OK to file two non-provisionals claiming priority from the same provisional? I'm quite certain you could file two applications in (whichever European patent office you prefer) claiming priority from the same US provisional, but I'm not familiar with this aspect of the US patent system. – Alexandre Flak Feb 9 '17 at 22:01
  • I don't know, but in the end you could always file a non-prov. and a divisional from that non.-prov, that should have the same effect. – DonQuiKong Feb 9 '17 at 22:02
  • You can certainly file one or more non-provisional applications, each claiming priority from one or more provisional applications. For instance, if your provisional discloses 5 different inventions, you could end up with 5 different patents, either by filing 5 separate non-provisionals or by filing one and then later dividing it (with requisite fees) into 4 more. – Upnorth Aug 13 '17 at 18:02

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