Let's say an Inventor is trying to patent a drinking cup/mug.

In July 2018, the Inventor files a Provisional Patent Application, with a claim for "a cylindrical drinking vessel storing consumable liquid".

In June 2019 the Inventor files a Regular Patent Application, with a claim for "a vessel, regardless of shape or size, for storing and/or consuming liquid"

Minus the fact a "drinking vessel", cup, or mug is not patentable subject matter in 2018, would the patent office deny the July 2018 filing date because the claims were broader in the regular than the provisional, or would it say it was supported by the disclosure and thus able to grant the earlier filing date.

Both claims are supported by the disclosure both in the provisional and the regular (e.g. The June 2019 claim is supported by the July 2018 disclosure)

The focus is on the specificity of the claims.

  • 1
    Why would your provisional even have claims? They aren't required. – Eric S Jul 24 '18 at 23:18
  • 1
    @EricShain Not legally Required but highly recommended – Questioning Jul 24 '18 at 23:19
  • That is debatable. Please cite a reference for that opinion. – Eric S Jul 24 '18 at 23:23
  • I don't have enough knowledge or experience to debate it, but all of the information that I've heard from professionals consists of there's no reason not to except for doing the work. If you're interested you can just Google reasons to do so. I'm sure you'll find a few. – Questioning Jul 24 '18 at 23:37

All that matters is that the provisional application fully support the claims you end up trying to get allowed. The provisional and its filing date only come into play when you get a rejection based on a publication, etc. that is dated between your two dates. That is when you show the examiner that the claim is supported in the provisional and get that reference removed as prior art to you application.

While a provisional application can have claims, they are not required. If they are present there is no need to conform the claims of the non-provisional to those claims.

  • So you're saying that the claims don't matter, rather the disclosure is what's important – Questioning Jul 25 '18 at 0:29
  • Claims in a provisional do not matter although they are considered part of the overall disclosure (in the U.S.). – George White Jul 25 '18 at 0:38
  • Thanks George. Since the claims are considered part of the overall disclosure, can they narrow the subject-matter thus causing the issue I'm inquiring about? – Questioning Jul 25 '18 at 12:19
  • Possibly if they contradicted something in the specification. It is almost inherent in claiming that not everything in spec. will be claimed. There are enough ways for an inventor to mess up an application without this specific worry. – George White Jul 26 '18 at 19:02

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