can you change a provisional patent - add or subtract elements?

[ecnerwal]

once the provisional patent is registered can you modify elements such as adding a capability or not including a capability in the conversion to patent?

[Brad]

Hi,

Great question.  You cannot add anything new to the provisional but you can add in new material when you file a non-provisional and you can link that non-provisional back to your provisional applicaiton (this is called a priority claim).

The risk here is that the old material from the provisional will get the older filing date and the new material will get the newer filing date of the non-provisional.  So, if your competition filed a patent on the new material in between the time you filed the provisional and the non-provisional, they may get awarded the patent for the new material and not you.

[likeskilts]

ok... but what if you're only claiming the benefit of the provisional patent and not converting?  will new material also get the new NPP filing date? or the old provisional patent filing date?   and what makes something a materially new thing?  if you add examples of other possible embodiments in the NPP are they new (assuming that in the PP you specifically said other embodiments were possible)? 

cool site, btw   never been here before

[Brad]

Hi,

I am not sure I fully understand your question.  In your example does NPP mean non-provisional patent?   Any new examples or embodiments that were included in the new non-provisional will get the new (later) filing date.    An example may help:

If you filed a provisional patent application describing a red bucket with a bottom and sidewalls that surround an opening in the middle and your figures show only this then those features will get that first filing date. (FILING DATE 1)

A year later your file a non-provisional patent application showing a red bucket with a bottom and sidewalls that surround an opening in the middle and a handle connected to the top of the bucket, then:

-a red bucket with a bottom and sidewalls that surround an opening in the middle will get FILING DATE 1
-a red bucket with a bottom and sidewalls that surround an opening in the middle and a handle connected to the top of the bucket will get FILING DATE 2

[Jeff]

So what if you realize a week after you filed the provisional that you should include the handle on your bucket?  Do you have to wait for your non-provisional filing, or can you file another provisional, and claim an invention date for the first part on the first provisional and the handle on the second provisional?

[Brad]

You would file a second provisional, then, when you file the full non-provisional you can link it back to both provisional #1 and provisional #2.