what can you take away from a provisional application?

Question

In the provisional application, I will disclose embodiments that I believe to be workarounds of my invention in hopes of being able to protect them as well.

However, if I later decide that these workarounds may not be able to be protected, I want to remove them so as not to give out any ideas to potential infringers who would be tipped off to implement the workarounds.

Is this possible?

In other words, when it comes time to file the non-provisional, I will at this point remove the workarounds from the application so that it is never disclosed.

Answer 1

Is this possible?

Nope. Since you will be claiming the benefit of a provisional filing, the entire filing must become published when the non-provisional is published.

Note however that you can delay publishing until issuance with a non-publication request (provided you are not also filing internationally). It follows that you can abandon your entire application if you are not satisfied with the coverage of the claims you are able to obtain from the patent office.

Even so, you can't selectively remove bits of disclosure.

If you can't word the claim generically to cover all the variants you have in mind (and still clear the prior art), it might not be worth getting a patent at all. Design-arounds can and will occur to potential infringers; if it's possible to evade infringement and reap the benefits of the invention by merely practicing the prior art that's not a good situation for the patentee. Having a list of design-arounds you've thought of is incredibly useful however as it tells you what a solid generic claim should cover.

Answer 2

The only option is to make the trade-off between the pluses and minuses of claiming the benefit of the provisional and not claim it or remove the priority claim before publication.