a) Filed several provisionals [P1] between March 2016 and March 2017. b) Filed a non-Provisional [NP1] in March 2017 claiming priorities from P1. c) Filed a provisional [P2] May 2017 containing improvements, new uses for NP1. d) Independent Claims of NP1 too narrow and exclude patentable matter in NP1. Question: Is there a way to get a broader independent claim to include excluded material in NP1 and new material in P2.

  • Good question. (I'm going to leave a formal answer for other users with more experience in this area.) However, more clarity would likely be helpful. Is it correct that you wish to expand the claim in the original non-provisional during the review process, as opposed to filing a new non-provisional? – DukeZhou Jul 12 '17 at 21:41
  • Also, what were the relative times between the first filing and the second filing? Was the original non-provisional published? Also, how does a preferred embodiment of an invention (which, by definition, is narrower than the general conception of the invention) enable a broader independent claim? That seems incongruous to me, though I may be missing something. – Maca Jul 13 '17 at 0:41
  • Could this be handled as a continuation of the original application? – Eric S Jul 13 '17 at 15:35

It's been awhile since I did this, but IIRC (if I recall correctly ), one may file a CIP at any time during pendency of the original non-provisional and its descendents, which is the only way to "add new material" to an application already filed. The new material in a CIP only gets priority of the CIP filing date unless it cites one or more non-expired provisionals. Thus, the patentability of any "broader" claim would be tested against the state of the art at each respective disclosure date. In theory, you can repeatedly file CIPs indefinitely and choose to divide and issue claim sets as you go, providing it's still only "one invention".

Of course, you can file as many provisionals as you want, whenever you want, but may only claim priority of those under a year old and containing materials not already disclosed in a publication or used in public, etc.

  • Upnorth. ["the patentability of any "broader" claim would be tested against the state of the art at each respective disclosure date."] (a) Are you implying that a broader independent claim is a possibility on the basis of new material in a CIP? (b) Is it a possibility with a new use/ improvement patent application? – Luke Lisle Jul 28 '17 at 13:33
  • (a) Yes. (b) Yes. To be patentable by itself, the claimed invention still needs to be patentably distinct from your earlier issued claims in the parent, otherwise you'd get a restriction requirement to prevent you from "double-patenting" the same invention (i.e., extending the expiration date of your rights to exclude others). Just ask your patent attorney for specific options. – Upnorth Jul 28 '17 at 20:37
  • Please don't use internet acronyms like IIRC. – Eric S Jul 29 '17 at 13:45
  • Sorry. Is that a rule or just something you believe people may find confusing, assuming they haven't been around since UseNet. Others seem to commonly use IANAL and TINLA here, so I wasn't aware of the rule. – Upnorth Jul 29 '17 at 23:46
  • My thanks to Maca, Upnorth, et al. It is clear to me that the new preferred embodiment contains at least one new invention and a few new uses not addressed in the prior non-provisional. I will proceed as advised with a CIP to keep all options open for later consultation with an attorney. It has been a most instructive conversation. Thanks to all. – Luke Lisle Jul 31 '17 at 11:04

Update: Turns out there was an earlier provisional, so this answer no longer applies. I've left it for posterity.

Because the first non-provisional was filed less than a year ago, a simple approach would be to convert the non-provisional into a provisional application.

This is allowed by 37 CFR § 1.53(c)(2), which provides:

An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section.

The USPTO has a quite readable page setting out the process. In short, you file a request for converstion and pay the USD 50 fee.

Then at 1 year from the first filing (that is, by March 2018), you would file a non-provisional (and any international filings) claiming the benefit of both the March application (which is now a provisional) and the May provisional. This non-provisional will be entitled to both dates, and therefore can rely on matter from either provisional application if need be. That said, ideally you would rely on the earlier filed application as much as possible for your claims, to ensure they have the earlier date.

  • Maca. (a) Converting the non-provisional to a provisional is a possible solution except that in this case it would entail giving up a whole year of priority - back to 03/16/2016 when the first provisional was filed. (b) I seem to recall reading somewhere that, in some circumstances, it may be permitted for a badly written independent claim to me revised even if it means making it broader? (c) I understand it is not possible to nullify the earliest provisional applications to extend the 1-year deadline. – Luke Lisle Jul 14 '17 at 7:37
  • (d) Is it possible to file for the new embodiment independently of the previous non-provisional? – Luke Lisle Jul 14 '17 at 7:50
  • @LukeLisle So the March 2017 non-provisional was filed claiming the benefit of an earlier provisional filed in 2016? Because that is pretty important information, which makes my answer wrong. – Maca Jul 16 '17 at 21:37
  • Maca. (a) Is it also significant for a possible solution that the later, provisional application identified not only a new preferred embodiment, but also new and more significant applications for previous embodiments? (b) Can new applications be considered a new invention in this case? The fact is that what was initially thought to be the principal benefit/use of the invention became secondary to other new benefits/uses. (c) So can I file for a new invention instead of a continuation in part? – Luke Lisle Jul 18 '17 at 16:38
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    @LukeLisle You're probably limited to a CIP, and probably in the US only, but it'll take some thought. In the meantime, it might be useful to put all these details into the main question along with a timeline of all the applications filed and an indication as to what details are in each. At the moment, it's a little hard to understand the whole situation. – Maca Jul 19 '17 at 1:38

If the non-provisional application has not been issued, you could file a continuation application where you could file newer specifications, drawings and claims and still get the priority of the non-provisional. This is true for USPTO. No knowledge of other countries. Ashok

  • I suspect you mean a continuation-in-part. A continuation uses the same description as its parent. – Maca Jul 20 '17 at 22:04
  • Ashok. (a) Granted. But the problem is that the independent claims of the non-provisional needs a fine-tuning that will make it broader - in the wording of the component elements. (b) If that can't be done, is it possible to treat the new provisional, with its genuinely more important, new uses as a new application for a new invention? (c) But, as Maca, pointed out, the answer requires an examination of the material. – Luke Lisle Jul 21 '17 at 15:13

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