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Patent Questions and Advice / Re: PPA -> NPA -> PPA with Additional One Year

« Last post by Brad on September 06, 2021, 09:34:59 AM »

Most people don't use the "convert" option going from PPA to Non-Prov. because you can lose a year of patent term.   If it were me and if the main thing that was holding you back was the claims, I would go ahead and file your non-prov. now without claims (claims are no longer required in non-provs) and your  non-prov can essentially be a duplicate of your provisional and claim priority back to your provisional.

It usually takes the patent examiner 6-18 months to even review your case and once they do you have up to 6 months to from that point to respond (with payment of government extension of time fees).   So you could easily buy yourself 12 months to add in claims to your application.

Remember, you can add or change claims at any point in the patent process as long as you have proper support for those claims and claim terms in your spec.  So the claims should never be a reason to delay your filing because those are the one thing you can change later.

I have never done the method you are suggesting so I don't want to comment on that.  It seems like it should work but the method I presented above would be more common and would save your patent term. 

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Patent Questions and Advice / PPA -> NPA -> PPA with Additional One Year

« Last post by manngraf on September 05, 2021, 10:41:46 AM »

Dear Brad,

I have a provisional patent application that is about to expire, and I am not ready yet to finalize everything in order to file non-provisional (mainly because of claims).

I need to keep the priority date. It is very important for me.

I read in David Pressman's book Patent-it-Yourself that it is possible to convert non-provisional into provisional. I want to save some fees.

Standard way written in the book: i convert my provisional to non-provisional, in this case i have to pay $80 for filing, $175 for a search, $200 for examination.

But if I convert this non-provisional patent application to new provisional immediately after filing, can I file non-provisional only with a filing fee paid?

That is

(almost one year ago) I applied for the provisional (PPA-1),

(in next few days) I will convert it to non-provisional (NPA-1) and pay $80 for filing,

immediately after that I convert into another provisional (PPA-2), paying $75 (or there any additional surcharges should be added?),

and only in a year I will finally fill non-provisional with priority including to PPA-1, PPA-2, and NPA-1. (I do not need PCT, etc).

Thank you very much!

Manngraf

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Patent Questions and Advice / Re: Can I file another provisional application if the first one isn't good enough?

« Last post by Brad on August 31, 2021, 10:06:05 AM »

Yes.  You can file a second provisional application and then your full non-provisional can link back to both applications or just your second one if you truly don't there there is any benefit to the first one. 

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Patent Questions and Advice / Can I file another provisional application if the first one isn't good enough?

« Last post by DullBoy on August 30, 2021, 06:34:51 PM »

I've heard that provisional application not detailed enough can lead to rejection of a following non-provisional application due to the mismatch of described subjects. Also no changes/amendments allowed to the provisional application filed already.

Can I file another provisional application, corrected and amended, and abandon the first application not referred by any non-provisional application?

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PatentFile Website Questions and Reviews / Re: Expired Patent

« Last post by SteveJ on August 02, 2021, 06:30:53 AM »

My question is if I tried to file a patent years ago but never finished it, can I now start over as if it was something new? No one has ever done anything with it and Im not sure how to find out how far it went, or what to do next.

As stated above, if your invention never made it into the public demain (by any means whatsoever), then you may be able to apply for protection.
If you want to find out if it was published, search online with the granting authority, using your name as the applicant (assuming you file dit in your name). If you find it, then it has been published, and applying for the same subject matter could be considerd a waste of money, as your own applicaiton will be used against you to destroy novelty. As a former EPO examiner of 14 years, there was no better source of prior art than the applicants own portfolio.

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PatentFile Website Questions and Reviews / Re: Using Information From Another Patent

« Last post by SteveJ on August 02, 2021, 06:25:46 AM »

This is a common questions and I have seen attorneys argue either for or against copying from other patents.  In theory patents are supposed to be in the public domain so many don't see anything wrong with copying from them.

My personal (non-legal opinion) is that you should not copy word for word and at least try to re-phrase and re-word things a bit.

That's gret advice. As an ex-EPO examiner, finding chunks of copied text didn't ring alarm bells, but it made it a lot easier to know where to search, or more pertinently, to know how to attack an application using the document from which text had been copied.

The idea of basing an applicaiton on a previous patent is how devlopment works. Indeed, you are required to cite the closest prior art in the European application process, and this is often someone else's patent. You add, amend, or improve sections of it to invent something new for which patent protection can then be sought. Just try not to copy word for word!

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Patent Questions and Advice / Re: How do I withdraw PCT patent application and refile later?

« Last post by SteveJ on August 02, 2021, 06:19:18 AM »

As stated, you can withdraw an applicaiton, as long as it has not yet been searched or published (whereby applicaitons are published after search). This will allow you to reapply with that subject matter at a later date.

Filing a PCT application can be done and priority can be claimed as stated. You do, indeed, have 12 months.

You might want to reconsider you strategy, though. Going through the PCT route gives you an opinion (not a patent) to the patentability fo your applicaiton. This is useful if you, then, go and apply for a full patent. However, if you intention is patent protection throughout Europe, it may be cheaper to use your current applicaiotn as prior art of an EP filing. This will save you the costs of the PCT applicaiton, which are not an insignificant amount. It all depends, though, on what you want to achieve.

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Patent Questions and Advice / Re: How do I get a copy of my file with the USPTO?

« Last post by Brad on July 22, 2021, 11:38:32 AM »

If they are unavailable that usually means those applications are not properly linked to your account so it will not give you access.  You should call the USPTO and ask them how to give you access to each of those application numbers.   

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Patent Questions and Advice / Re: How do I get a copy of my file with the USPTO?

« Last post by PPage on July 22, 2021, 08:44:25 AM »

I've tried that.  It tells me 'Data is Unavailable'.  I also have numbers for provisional and utility applications which cannot be found, they've been unavailable for about two years now. 

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Patent Questions and Advice / Re: How do I get a copy of my file with the USPTO?

« Last post by Brad on July 21, 2021, 10:11:14 AM »

You must first have an account with the patent office and link the application to your account.  Once you have that, you can view it through Patent Center or PAIR:  https://www.uspto.gov/sites/default/files/documents/Patent%20Center%20User%20Guide_Beta.pdf

I would call the USPTO Assistance group and have them walk you through the process and needed forms step by step: 1-866-767-3848