In the US: As I understand it, provisional applications (PPA) are not examined. If this is correct, then are filing dates ever denied? If yes, under what circumstances?


As I understand it PPA claims are not required. Can including PPA claims backfire. For example, If the scope of the PPA claims is smaller than the NPA (non provisional application), Is the entire NPA claims denied? Any examples or citations are always appreciated.

Any pitfalls to avoid are always appreciated.

  • 1
    Please split this into two questions, they aren't really related.
    – DonQuiKong
    Apr 13 '18 at 18:44

I know an inventor who didn't get a filing date because the entire body of the short amount of text in the application was labeled something like "Summary" or "Overview". Another did get a filing date but the drawings he submitted had very light lines and all of the drawings in the USPTO's servers were blank.

  • 1
    Can I assume that inventor #1 filing date was denied because the application was not only lacking in format, but in substance as well (claims, enabling description, non-obviousness, etc.)?
    – gatorback
    Apr 23 '18 at 16:04
  • 2
    No - those things are only looked at during examination. Provisional applications are never examined and, in any case, no examiner is involved with the decision regarding a filing date. I would not have expected this to happen. It may be an anomaly but I did hold the papers in my hands and that was the situation.
    – George White
    Apr 23 '18 at 21:55
  • George, can I ask your thoughts on using "patent mills" for provisional application formatting only? (General consensus of patent attorneys is using mills for non-provisional is most likely to hurt you, but my experience is they at least know format a provisional for submission, at the cost of just a couple hundred bucks. I had a provisional formatted in this manner reviewed by an experienced advisory patent attorney, and there was no problem with priority when I filed the nonprovisional with an engaged attorney.)
    – DukeZhou
    Apr 25 '18 at 16:45
  • Any problems with priority only surface when the provisional is actually relied upon. If, during the examination of your non-provisional, some reference is found that is dated between the provisional filing date and the non provisional filing date, only then is the provisional relevant and actually looked at. At that point the question will be - does the content of the provisional adequately support the claim that is being rejected. That test is no less rigorous because the document is a provisional.
    – George White
    Apr 26 '18 at 22:15
  • I understand that Legal Zoom puts up boxes (with prompts) for you to put text into. Your application ends up being exactly the words you typed in.
    – George White
    Apr 26 '18 at 22:19

To the second question - The existence, breadth or narrowness of claims in a provisional application should not have any effect on the non-provisional applications that benefit from it. I suppose you might write something in a claim or anywhere in a provisional that demonstrates you are not "in possession" of the invention or defacto makes some admission about prior art, etc.

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