claiming a provisional date

[iassaf]

I have filed a provisional patent. Now I am ready to file a utility application. I have some added feature in the utility patent that did not exist in the provisional. Would the utility patent be allowed with the new features or the claim related to the new features will be denied?

Thank You,

Imad Assaf

 

[divgradcurl]

I have filed a provisional patent. Now I am ready to file a utility application. I have some added feature in the utility patent that did not exist in the provisional. Would the utility patent be allowed with the new features or the claim related to the new features will be denied?

Thank You,

Imad Assaf

You can file a continuation-in-part claiming priority back to the provisional application that contains new matter -- but only matter disclosed in the provisional application is accorded the priority date of the original provisional application. Any new matter only gets the priority date of the filing of the CIP.

If you want to make absolutely sure that the original matter is afforded the correct priority date, you could either convert the provisional to a nonprovisional or file a continuation claiming priority to the provisional and leave out the new matter, and then file a separate CIP application containing the new matter -- that will make clear which stuff is accorded which priority date, but it will be more expensive and take more time and effort. If the priority date is less important that getting the new matter into the application, then simply file a CIP claiming priority to the provisional.

What you cannot do is simply convert or file a continuation and add new matter to the specification -- that will be rejected. You also cannot claim something that is not disclosed in the specification. Any new matter has to be added via a CIP, and cannot get the priority date of the original provisional application.

 

[iassaf]

Thank you very much.


Just to make sure, as the priority date is less important that getting the new matter into the application,

1- I should file a CIP directly based on the provisional (not file a utility application based on the provisional then a CIP based on the utility application). Correct?

2- The CIP includes all matters.

1- In the CIP, do I need to underline the new matter or not?

2- In case of a future dispute, what was detailed in the provisional will have the provisional date and the new matter will have the CIP date. Correct?

 

[divgradcurl]

Thank you very much.


Just to make sure, as the priority date is less important that getting the new matter into the application,

1- I should file a CIP directly based on the provisional (not file a utility application based on the provisional then a CIP based on the utility application). Correct?

No, I misspoke above -- it's been a while since I've looked into this question. All you need to do is file a regular application including the new matter, and then claim priority to the nonprovisional application. This may complicate the prosecution some, and there is no way that any new material will be afforded the earlier priority date, but it should not be an issue. The only potential issue that might arise is if the examiner finds art that is later than the provisional, but is earlier than the nonprovisional, and it may shift the burden to you to show what matter is entitled to the earlier priority date.

2- The CIP includes all matters.

1- In the CIP, do I need to underline the new matter or not?

2- In case of a future dispute, what was detailed in the provisional will have the provisional date and the new matter will have the CIP date. Correct?

No need to underline anything -- just file a regular nonprovisional application claiming priority to the provisional.

As to the dates, that is correct, although if you ever need to enforce the patent, just what is "new matter" and what is in the provisional will be a contentious issue.