How similar does non provisional and provisional patent have to be?

Question

I prefer to not spend a lot of money before I see if it has any value so I would like to file a provisional patent on my own.

The basic invention takes some data from inputs encodes it in a certain way and then sends the data out. It sounds like a server and it pretty much in its functionality, but what I would like to patent is how it takes the data and encodes it. So would I have to describe all the types of input and all the types of outputs or can I talk in general terms and when if I file the patent describe all the specific inputs and outputs?

Answer 1

There is no formal requirement that a non-provisonal have the same scope of content as a provisional from which it gets priority benefit. However the reason to file a provisional application (no such thing as a provisional patent) is to establish that, on the date of filing, you had the invention in hand. Anything you later want to claim as your invention needs to be fully explained in whatever you file whose date you need to rely on. Patent applications need to explain things such that someone in the field can make it and use it without undue experimentation. The more you put into the provisional document the better.

Answer 2

The provisional application should have enough details to back up the claims that you make later. You cannot later add to the specification or the drawings in any material way. If you do, then that part of the invention gets a later priority date of when you actually file the document - as another provisional or as a regular application.

To be safe, you may want to think out your claims, although you don't actually have to provide any with the provisional application. Also, think of any fallback position you might want to take if the examiner finds prior art or if prior art is found after the patent grant. If you don't do the thinking early on, then you may not have enough disclosure to get the priority date of the provisional.

If nothing else, give lots of details and example of the 'invention', that is the part that you figured out. Also think about how someone else could bypass it. Everything else required to complete a regular application probably already has prior art so can be introduced with the regular application if needed.

Answer 3

To get the benefit o the provisional filing date, the provisional must encompass an enabling disclosure meeting all the requirements for a non-provisional. Since we are under the first to file, you want your original filing date. In addition, you do not want to get put in the position of losing your 0ne year grace period under the AIA for the regular application.

You are treading in deep waters by filing a "makeshift" provisional that an examiner reviews and write a rejection. If you use the rejection to narrow claims in your nonprovisional, you have the issue of estoppel if the nonprovisional issues and is challenged. If you abandon the the provisional and lose the filing date, the nonprovisional may be held against you as prior art.

Do yourself a favor and hire a patent agent to file the provisional.