1

As the title states.

Can you amend a non-provisional patent application to bring in information from referenced provisional patent applications?

For example: I have a figure in the provisional that was not included in the non-provisional application. But I referenced the provisional in my non-provisional and claimed benefit of it. Can I later amend the non-provisional application to bring in that figure and/or other text information from that provisional app? (so as to support claims and/or amend to add new claims)

1

Amendment in drawing,specification and claims are allowed by USPTO to the extent that "No amendment may introduce new matter into the disclosure of an application". Ref

As elucidated in your example, no new matter is likely to be introduced. Hence, amendments as envisaged by you may be attempted.

Amendments are to be carried out in compliance with 37 CFR 1.121.

Actual implementation may be found to be tricky. Consulting an attorney is the best option.

| improve this answer | |
1

Yes - the specific wording in the MPEP at 608.01(p) Completeness of Specification is

(b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, international application, or international design application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).

Below this quote in the MPEP is more information on the required form of the amendment.

| improve this answer | |

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.