Patent and Invention Help Forum

Provisional application conversion?

Provisional application conversion?
« on: September 14, 2015, 09:18:34 PM »
I am having a hard time understanding the conversion process for a provisional application and its effect on a timely patent filed by the same inventor concerning the same subject matter in the future.

More specifically, can the lack of a detailed description of the invention and the lack of a detailed description of the best mode of implementation, as well as the absence of any drawings and claims contained in a provisional patent filed by an inventor, restrict that inventor in any way from filing a non-provisional patent for this same invention in the future, whether filed within that 1 year or after? If the best mode of implementation and the description does not change in the subsequent provisional patent but is expanded upon in great detail, does the inventor still enjoy the benefits of the nonprovisional filing date?

Thank you in advance for this clarification.

Brad

  • Patent Agent
  • *****
  • 1892
  • Owner of PatentFile, LLC
    • View Profile
    • Patent File
Re: Provisional application conversion?
« Reply #1 on: September 17, 2015, 08:40:23 AM »
Hi,

I am not fully sure that I understand your questions but I think they are:

Q1) Can having a weak provisional (e.g. no figures, not enough detailed description, etc.), hurt your chances or limit you when it comes time to filing a non-provisional?
A1)  The non-provisional does not have to be indentical to the provisional so even if you filed a weak provisional, this should not stop you from filing a better (more proper) non-provisional.

Q2) If the best mode and detailed description is expanded upon in the non-provisional, can you still rely on the provisional's early filing date?
A2)  It depends.  If you are trying to claim piece X in the non-provisional and piece X was shown and mentioned in the provisional than you can use the provisional date for claiming piece X.  However, if you are trying to claim piece Y in the non-provisional and piece Y was not shown clearly shown or not mentioned in the provisional than you cannot use the provisional date for piece Y.

My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://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.