I know this question has been previously raised under the heading: "Can I describe two different ideas inside a provisional patent application" however what concerns me is the priority dates of the different inventions. Let's say a provisional application contains two inventions. You file the subsequent non-provisional application for the two inventions. The examiner makes a restriction requirement and requires you to select claims for one invention. You do that for the first invention and file a divisional application for the second invention. I accept the examiner will give you the priority date of the provisional application as far as the first invention is concerned. The question is will he allow you the priority date of the provisional application as far as the second invention is concerned? The reason I ask this is you paid only one provisional application fee. Can you get two priority dates for the price of one provisional application?
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This is beyond my expertise, but I doubt the filing fees of the provisional is the issue. Breaking up the non-provisionals is reasonable in order to examine each invention separately, but a provisional is not the document being reviewed, and merely serves as a reference.– DukeZhouCommented Jul 21, 2017 at 20:32
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Afaik it's simply yes as an answer, but maybe someone wants to add some reasoning– user18033Commented Jul 21, 2017 at 21:00
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Is it not safer that if in doubt whether there is more than one invention to file a provisional for each potential invention? Micro entity provisional filing fee is only $ 65.00. What if this thing lands up in court one day and a judge decides that you were not entitled to the priority date of the provisional application.– Deon P HugoCommented Jul 22, 2017 at 21:12
1 Answer
Can you get two priority dates for the price of one provisional application?
Yes.
This is clear from 35 USC § 121 which provides (emphasis added):
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application.
The filing date of the original application is the date of the provisional. This is clear from 35 USC § 120, which provides that a non-provisional application which is filed on the basis of a provisional application is entitled to the benefit of the filing date of the provisional application.
Indeed, the filing fees are not the issue, and the provisional is not exhausted by the filing of the first non-provisional. You could quite legitimately file 10 non-provisionals, all claiming the benefit of the same provisional.
