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Writing Non-Provisional (better PCT) above 3 PPAs

Writing Non-Provisional (better PCT) above 3 PPAs
« on: October 14, 2017, 11:42:44 AM »
Hello,

I have 3 PPAs recently submitted and about to start PCT and NPA over them. All PPAs written such a way that all formulas, figures numerations and numbers on figures are unique over all 3 PPAs, however claims and paragraphs on each PPAs start from the begin. 3 PPAs in total have ca. 150 pages, 40 figures and 120 claims.

My goal to place only few (most important) information from all 3 PPAs into NPA and PCT (to get patent protection) and rest - to publish (preferably some way in USPTO) so that nobody else can patent the rest, but everybody may use it.

If I write NPA such a way that it contains some parts of all my 3 PPAs (paragraph by paragraph), I suppose that USPTO do not like to check all my 150 pages of 3 PPA about priority and I will lost priorities of my 3 PPAs. Since some information from my PPAs are already published in scientific journals (directly after I got confirmations from USPTO) I will lost a possibility to patent it abroad...

Please, advice:

1. can I somehow submit additional information for USPTO like a list of paragraphs and claims of PPA that match to corresponding paragraphs and claims of NPA and what's happen with the priority?

2. if I submit PCT with only circa 30% of information of PPAs, is it correct that the rest (situated in PPAs) will be never published and I will lost it, or PCT is published together with all PPAs referenced?

Thank you!

Sincerely,

Mann

Brad

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Re: Writing Non-Provisional (better PCT) above 3 PPAs
« Reply #1 on: October 16, 2017, 09:01:53 AM »
1)  Why do you think you will lose your priority dates?  Usually the patent office will by default assume the priority claims are valid so you should be able to keep those.

2)  Yes your provisional applications will not publish but they will be "available" to the public through the USPTO Public PAIR system so the public could find them and view them online.

One thing you may want to do is merge all of your 3 PPAs together and you can attach that file as an "Appendix" to your full non-provisional.   This also will not publish but it will be another way to make sure all of your information from the PPAs are included with your full non-provisional.



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Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: Writing Non-Provisional (better PCT) above 3 PPAs
« Reply #2 on: October 16, 2017, 09:35:04 AM »
Dear Brad,

thank you very much for your kind information!

Please, may I follow up my question, please, advice is it correct that:

if I submit now a lot of additional information in one additional PPA, write corresponding claims, take this PPA as 4-th priority for my NPA, but do not place claims form 4-th PPA into NPA, I will let all said additional information for public, and be able to save myself from others to apply patents for similar embodiments that are not listed in NPA. The reason - I am worried to place a lot into NPA because the NPA may look too heavy so USPTO force me to divide NPA into several applications that I am not yet ready to financially support.

Thank you!

Sincerely,

Mann

Brad

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Re: Writing Non-Provisional (better PCT) above 3 PPAs
« Reply #3 on: October 16, 2017, 11:49:50 AM »
They will only make you divide if you have multiple inventions in your claims.  It does not matter how long your application is.

So in your case one option would be to have a very large application but just try to limit your claims to only one type of invention and this should not trigger a restriction. 
My free patent template: http://patentfile.org/free-provisional-patent-template/

Hire Me:  http://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.