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The answer was subtle but I found it at smart up legal. The main reason an entity would elect to convert a provisional application to a non-provisional application is in the case where a public disclosure of the invention occurred prior to the filing of the provisional application and at least one year and one day have lapsed since the disclosure but not ...
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No, there is absolutely no way to include anything new in any patent application anywhere, no matter what the reason is, once the application has been filed.
Your best option is to nationalize the PCT application in the US. You could claim priority to the PCT application, too, but in Europe that would be only valid for the new matter introduced there. I ...
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So long as the new title meets the requirements for patent titles, there should be no problem. Keep in mind that suggested changes to the title may be made to you, so it is already possible that the title will change after your non-provisional has been reviewed.
The title -- name -- of the invention isn't the invention, it is a clear and concise description ...
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No, that's not a reason for rejection.
However, every new subject matter (read: every change) does lead to losing the provisional's filing date for every claim using (referencing, being based on) the new subject matter, even if only marginally using it.
You would then get a patent (if not rejected for other reasons) having different filing dates for ...
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You are correct. From MPEP 211.05 A:
for a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovisional ...
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The MPEP contains the rules governing a continuation-in-part. Refer to Section 201.08 Continuation-in-Part Application [R-11.2013]. What differentiates a Continuation from a Continuation-in-Part is the inclusion of Paragraph 2.06: Possible Status as Continuation-in-Part. This is an indication that your Continuing Patent Application contains information not ...
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The legal basis for claiming priority in the EP is Article 87. Paragraph 1 reads
"Any person who has duly filed, in or for
(a) any State party to the Paris Convention for the Protection of Industrial Property or
(b) any Member of the World Trade Organization,
an application for a patent, a utility model or a utility certificate, or his successor in ...
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What @EricShain is indicating is that, while provisionals are much more forgiving, filing a non-provisional without engaging an attorney is never recommended.
You want to stay away from "mills" such as LegalZoom, which will likely do more harm than good.
Solo-practitioners are the way to go if budget is an issue. I've gotten quotes as low as $3500, flat ...
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This is a US/USPTO answer.
It is not clear what the situation might be. I have seen a case where original independent claims were all canceled and new independent claims submitted and the examiner declared a "restriction by original presentation" or similar words.
A restriction is properly issued when the initial claim set contains claims to more ...
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US patents and applications can be revived if the relevant fees are paid and a statement is made that the delay was unintentional. In theory, there is no time limit on this. See https://www.uspto.gov/patents-application-process/petitions/09-revival-based-unintentional-delay
You could state your case in the petition trying to show that the entire delay was ...
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Note - If you are not in the U.S. you need to file the PCT application either with the IB in Geneva or with your local patent office, not with the USPTO.
Specifically regarding the 100 claims in the PCT application. You might want to do something to keep the 80 that are not in the U.S. application from being considered "new matter" if you ever wanted to ...
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Whether you have to claim priority in the PCT application from the US non-provisional depends on two factors:
Does the US non-provisional disclose subject-matter not contained in the two US provisional applications?
Will the US non-provisional be filed before the PCT application (i.e. will it have an earlier filing date)?
If the answer to the first is NO, ...
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I do not know the mechanics that might take place but the patent would not be enforceable in practice if it is clear that an earlier filed application makes it not novel.
Your question has an assumption that provisional applications are more hidden from examiners than a non-provisional application and that filing the non-provisional makes it findable. That ...
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They do not have a hard limit by statute (like you do) but you can (possibly) get time added to the end of your patent term if they exceed 4 months.
Under 35 U.S.C. 154 b 1 A they need to -
(ii) respond to a reply under section 132, or to an appeal taken under section 134, within 4 months after the date on which the reply was filed or the appeal was taken . ...
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A patent practitioner is someone who is registered with the USPTO as allowed to practice before the office on behalf of others. Unless you have passed the patent bar exam, etc. you are not a patent practitioner.
Reading the bold text carefully you will see it applies to a "juristic entity". That means, as it says, that the applicant is a corporation. ...
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Yes
I suggest -
"This application is a continuation-in-part of co-pending application ZZ/YYYYY filed on ZZ/Z/ZZZZ and claims the benefit of provisional application XX/YYYYY filed on XX/X/XXXX."
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EFS-Web is not very user friendly. You probably already looked at the USPTO's guide to EFS-Web. I don't think the EBC Help Desk people - who are very patient and helpful, will be much help with actual decisions, more the mechanics of uploading.
The PDF files need to be 8.5" by 11" (or A4) and have names that are EFS-Web legal. If a PDF is somehow 8.25" by ...
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Some last minute things you might check are that -
you are filing a specification, claims and drawings. The first sentence of the application needs to correctly claim priority to previous applications and incorporate them by reference if that is desirable (that is not fixable after filing without refiling). Every item in a drawing that has a reference ...
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Since this Q&A site is basically meant for matter related to USPTO, unless specifically mentioned about other jurisdiction, it is safely assumed that question put here is related to USPTO. With this assumption the following answer is put forth.
The error can be corrected as per 37 CFR 1.76 section c(1). The same is quoted below.
(c) Correcting and ...
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Just be careful how you share the document. For example, avoid sharing by link, as the URL can get stored in the history of a shared browser, and invite the people one by one.
Also you may "harden" the security of your Google Account by enabling 2 factor authentication.
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Agreeing with @Maca, if push comes to shove and the date of filing of the provisional is needed to overcome some reference that came out between filing the provisional and the non-provisional, it will looked at for support of the claims with exactly the same criteria as would be applied to looking for adequate support in a non-provisional; Overcoming such a ...
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You need to include enough details to comply with the various requirements for a patent application.
For example, in the US, you must provide a written description which enables any person skilled in the art to make and use the invention, and provides the best mode (35 USC § 112). There are of course a number of other requirements, and it would be ...
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As @EricShain has advised, an algorithm would be a utility patent.
However, if you are attempting to draft a non-provisional application for an algorithm without expert knowledge of Alice, Enfish, Bascom, and several key cases leading up to Alice, you're asking for trouble and putting the viability of the patent in great peril.
Even with extensive ...
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Because there are no claims in provisional patent applications, the scenario described could not occur.
Also, the non-provisional application filed by the company in March would not have been made public by September of the same year. John couldn't have known what the company was up to in the timeline given.
If you're asking which applicant has priority ...
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