How much can you change a PPA when converting into Non-Provisional such that you will be able to keep the PPA date?

Question

Concerned with PPA “converting” to Non-Provisional

I am in the process of drafting up a software Provisional Patent Application. I have an issue in that there are parts of the system that require cryptographic signing schemes that I understand from a high-mid level how they work but since crypto is something you want to be 1000% sure about I want to be able to recruit and hire a professional crypto guy to double check my work and perhaps to give advise on potential use variations to explore or to further help with my own prior-art search and adjustments.

My plan is to file the PPA by myself, then go out and try to recruit someone to come on board to help, to avoid disclosure issues and to offer security against any of the candidates potentially swiping the invention. My main concern is my ignorance on how much leniency is given when allowing for changes between the PPA and the finalized Non-Provisional Filing such that the initial date of the PPA is extended to the Non-Provisional. I am assuming the crypto guy will be able to offer significant additions to the original invention, but I am reasonable confident that I understand the stuff well enough to be able to describe the final system in a broad enough sense such that the crypto guys additions will be along the lines of adding detail to existing aspects, and adding variations that I hadn’t originally thought of. I am intending on bringing in an actual patent attorney at this point of course to do a more rigorous prior art search and to make sure we DONT change it to the extent that it won’t be able to use the date of the PPA.

Is this a terrible idea and I should just take the risk and bring someone on board to file before I file a PPA or should I be alright?

Thanks in advance!

Answer 1

You can make any change you like between a provisional application and a non-provisional application. It is just that claims in the non-provisional that are not sufficiently supported in the provisional will not get the benefit of the earlier filing date. This is a claim-by-claims issue. Some may end up with the earlier date and others with the later date.

It is not a matter of "leniency". IF prior art is found by the examiner that is dated before your non-provisional filing date it will be used in a rejection. It is up to you to notice that it is after the provisional's date and then to try to knock out the reference as prior art based on pointing out the material in the provisional. It will need to be enabling adn contain at least as much information as the purported prior art reference.

The earlier date can be important but many not be as important as a solid non-provisional that says what it needs to say to support the best claims you can get allowed. If you keep your invention confidential between the date of the provisional and the non-provisional then the real benefit is knock out prior art that is published between those two dates. It is very possible that your pro-se written provisional ends up providing no actual benefit.

Other issues are that the crypto expert may become a co-inventor by making a conceptual contribution to something you end up claiming. You might want an assignment agreement as well as an NDA.

Someone does not become a co-inventor by you offering that to them, they become a co-inventor by making a conceptual contribution to something that is claimed. Sharing in the money made from the patent and being a co-inventor are not the same thing. In one case a consultant might help a lot but not make a conceptual contribution to something you claim. Not an inventor but you can compensate them with 50% of the money you make if that is your agreement. In a different case a consultant makes the biggest contribution ever to the ultimate invention but has assigned their rights to you and gets paid by the hour under your agreement.

Also, there is not inventor vs co-inventor. All inventors are equal unless there is an agreement between them that says otherwise. And, the default is, any inventor can license the invention to any third party with no accounting/payment to the other inventors.