8

There is no requirement for claims Provisional applications are not examined, and therefore have no formality requirements. As long as they are validly filed, it doesn't matter precisely what format they are in. But including claims in a provisional is good One key purpose of a provisional is to for a later non-provisional or Convention application to be ...


5

If you don't have a viable alternative and you are wiling put in the work, why not. I would recommend the well known book: Patent it yourself, by David Pressman and the less well known book by Ronald Slusky: Invention Analysis and Claiming. Although provisional applications do not need claims, seeing the thinking behind claims should help you with ...


5

Can you get two priority dates for the price of one provisional application? Yes. This is clear from 35 USC § 121 which provides (emphasis added): If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the ...


4

I think, very. As noted in the other answer, there is (probably) no legal requirement for claims. However, the whole purpose of the provisional filing is to give you a date for the invention. If you do not write the claims, chances are you will not actually set out the invention, but only one or a few specific implementations. This can get tricky. A ...


4

Can retrospective damages can be sought in states designated by a PCT application before a national phase application is granted? It depends on the country, as this is not the subject of any international treaty. I will therefore talk about the US, UK and Europe, as you referenced these in your question. US Yes. Provisional rights are defined by 35 USC § ...


4

It is likely you are seeing the effects of a continuation (or divisional, outside of the US). The continuation retains the priority date of its parent, but has a much later filing date. By way of example: A Canadian application (CA1) is filed on 1 Jun 2012. CA1 therefore has a filing date of 1 Jun 2012, but no priority date. A US application (US1) claiming ...


4

No, you can't safely assume this was a lie. First, US patent applications do not generally publish until 18 months after their priority date (so, for an application claiming priority to a provisional, 18 months after the provisional's filing date). Therefore, if the company had filed their provisional the day before yours, it would not yet have become public....


3

It's only stupid if you plan to build a proper business plan around this idea and commercialize it. In that case, your provisional patent may not 'have teeth', and you wasted time and money. Software patents are exceptionally tricky. You claims could hold no real weight, if challenged.... which is the only time that really matters. Remember that a ...


3

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 ...


3

If you believe you have publicly disclosed your invention or that it may become publicly disclosed, you should probably file a provisional patent application. Note this is different than what the other current answer says. A provisional application is not a full application, but will secure your rights for one year while you continue to develop and improve ...


3

Documenting an invention in a way that never sees the light of day does not create prior art. A provisional application (it is not any kind of a patent, just an application) is not "published" and, if not followed up by a non-provisional application, never does see the light of day. If you are interested in a defensive publication you would want something ...


3

Can I describe two different ideas inside a provisional patent application? Yes. Indeed, you could do this in any application, whether provisional or non-provisional: there is no restriction on what can be described. The restriction on multiple inventions is provided by 37 CFR 1.141(a), which provides: (emphasis added) Two or more independent and ...


3

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 ...


3

Before we answer the question, you should be aware that the cited application US20140312193A1 is a full patent application and not a provisional application. Patent applications don't expire. Rather they are either granted or rejected. The definitive site to determine the status of a US patent application is the US Public Pair. For this case, get past the ...


3

Yes - you can file a provisional with the new material and then later file a continuation-in-part that claims priority to the parent and also claims the benefit of the provisional. This assumes the parent is still pending and it is within a year of the new provisional. If done correctly, the new material in the continuation-in-part gets the benefit of the ...


2

My impression of the PPA is that you can try to commercialize what's in it without inhibiting your chances of filing for a non-provisional one before your 12 months are up. I am not entirely sure, but what I know is form the USPTO website as quoted below: http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-...


2

Proper classification is the responsibility of the USPTO, and not the applicant. Non-provisional applications are relatively often misclassified, and this is not something that can cause any challenge to the validity of a filing date or the enabling nature of the disclosure. It may cause less than adequate proficiency in examination, but that is another ...


2

DISCLAIMER: This is not legal advice, and is not to be relied upon for legal decisions. I am not attorney. Read the relevent laws yourself and consult with an attorney. Classification The classification noted on a patent application is only a suggestion to the USPTO made in good faith (i.e. you could get in trouble for intentionally trying to mislead/etc) - ...


2

There should be no problem. Let's set out a timeline: 1 Sep 2014: US provisional ("US1") is filed. 15 Oct 2014: Public disclosure of material in the US provisional filing. 31 Aug 2015: French Convention application ("FR1") claiming priority to US1 is filed. US1 is filed before the disclosure. The disclosure is therefore not relevant for ...


2

I think that the best procedure would be the following one : 1) Fill a provisory patent with your idea and much as detail as possible 2) Offer the company to set a bilateral NDA between you and them 3) Compare the provisory patent. If you bring new material, then you'll have something to negotiate. You should not forget that claims could be modified at ...


2

There is not enough information here to inform a proper answer, but I won't let that stop me. My sense is that there is no problem unless you plan to use the trademarked name in a claim in a subsequent regular application. Don't use trademarks in claims. Provisional applications are so cheap to file that it couldn't hurt to send in another one if you're ...


2

You do not have to manufacture/produce your invention in order to apply for a provisional patent. A provisional patent application is not examined and will never issue. A non-provisional patent application must be filed within 12 months of the filing date of the provisional patent application. You may sell your rights to your invention, your ...


2

The rule you are referring to is probably 37 CFR § 1.29(a)(4), which provides: Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year ...


2

Looks like you did a fair amount of research. Great job -- individual inventors have it tough. You get 12 months from the earliest priority date to file a PCT and claim its benefit, thus, you have to go the PCT route and can't extend it. See here for an example. Alternatively, let go of the provisional application. Do nothing. Exploit your tech, and reset ...


2

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 ...


2

No. Under the Paris Convention you can only claim priority to the first filed application. The exception to this is if the first application is abandoned without being published and was never used in a priority claim, then the second application in that same country can be used for priority. Article 4 is very clear. Article 4 C (4) A subsequent ...


2

All that matters is that the provisional application fully support the claims you end up trying to get allowed. The provisional and its filing date only come into play when you get a rejection based on a publication, etc. that is dated between your two dates. That is when you show the examiner that the claim is supported in the provisional and get that ...


2

Yes, you can always get a patent for modification of your invention as long has it improves the functionality of the invention. For eg your old invention has A,B,C components and you have invented that A,B,D or addition of new component D to exiting A,B,C has superior function then the patent would be granted for the new component D but not for A,B,C. i.e.,...


2

You can look up the provisional application by its application number in Public PAIR and verify that it exists. Since that also doesn't find it according to your comment It might be a typo in the non-provisional. If the application gets a rejection based on a reference published before the non-provisional was filed and the applicant wants to disqualify the ...


1

How much information should be in a provisional patent application? Your provisional application should explain the invention in sufficient detail that a skilled person, reading your application, could put it into practice. A provisional patent application has no formal requirements, so strictly does not need to include claims or drawings. However, if you ...


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