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Say a company files a provisional with three completely different inventions. Inventors A & B worked on idea 1, inventors C & D on idea 2, inventor F on idea 3.

11 months later two applications are filed based on the provisional, one for idea 1, the other for idea 3. Each lists their respective (A&B / F) inventors.

Questions:

  1. Will the provisional become public in full as part of either application?
  2. If so, is it possible to remove the irrelevant inventors / invention?
  3. Can the applications list inventors not present in the provisional?

1 Answer 1

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Once any non-provisional application that claims priority from a provisional is published or granted, that provisional is open for public inspection. So yes to question 1.

The provisional itself is not edited or amended so all three ideas are visible at that time. So, no to 2, the non-provisional is never amended itself but yes to number 2 if you mean, “can the non-provisional differ from the provisional”, yes.

Any individual non-provisional would normally only contain one of the ideas. It needs to list the true inventors who made a conceptual contribution to at least one claim. They may or may not all be associated with the provisional. So yes to question 3 but there is a catch; there must be at least a one person overlap.

At the time of filing a provisional it is not always clear who the true set of inventors will be to a subsequent non-provisional that later relies upon it. Inventorship is based on exactly what is claimed but provisional’s don’t even require claims. Given this imprecision it is wise to list (in the provisional filling) all who might end up inventors because there must be at least one listed inventor in common between those on the provisional and those on a non-provisional in order for the non-provisional to even claim priority to a provisional.

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  • Thank you for the incredibly detailed and conclusive answer!
    – Stefan
    May 31 at 9:13

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