Provisional Patent Application

[imfinny]

What is the name of your state? Minnesota

A few months ago, I filed a provisional patent application. I had performed an extensive patent search prior to filing the application. However, shortly after filing, I came across prior art that requires me to change my claims slightly (i.e add the term "unitary structure") to make the invention patentable (novel). Should I file another provisional application with the corrections and reference the first application, or should I amend the original application, or is there another method for accomplishing this? I assume that regardless of what I do, I still have only 1 year from the original application date to file for a utility patent.

 

[divgradcurl]

What is the name of your state? Minnesota

A few months ago, I filed a provisional patent application. I had performed an extensive patent search prior to filing the application. However, shortly after filing, I came across prior art that requires me to change my claims slightly (i.e add the term "unitary structure") to make the invention patentable (novel). Should I file another provisional application with the corrections and reference the first application, or should I amend the original application, or is there another method for accomplishing this? I assume that regardless of what I do, I still have only 1 year from the original application date to file for a utility patent.

Don't do anything. The claims in the provisional application are really not that relevant at this point anyway, and you'll have plenty of time to narrow your claims later on during the prosecution of the nonprovisional application. Besides, it's the USPTO's job to tell YOU when the claims need to be narrowed, not the other way around. When you convert your provisional into a nonprovisional (or file a continuation, or however you decide to get to a nonprovisional application), you can file a preliminary amendment at that time to amend the claims if it's really bugging you. But I wouldn't recommend it -- let the USPTO do their job, you don't want to limit your invention any more than you absolutely have to. Do, however, make sure that you send in this newly-found art with an IDS so that the USPTO is aware of it -- failure to do so would be inequitable conduct on your part, and you certainly don't want that...