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Provisional Patent Application and Claims
Posted by Anonymous . updated on 5/28/2009
Although it's not necessary to include claims in a provisional patent application, is it allowed and/or advisable to do so? What, if any, future problems might arise from a provisional application's lack of claims?
Answers (2)
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Daniel ...
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It is not necessary to include claims in a provisional patent application. Provisional applications are not examined by the PTO. They only secure the date for your future full utility patent, based on the provisional. There is no negative inference or any negative effect for not including claims in the provisional patent application.
However, I usually advise and draft claims for a provisional patent application. This forces both the inventor and his or her patent agent/attorney discuss the nature and scope of the invention (in order to draft patent claims), and makes them consider different claim elements. Consequently, it forces review of the specification in light of those claim elements, and leaves much less chance that some claim element would have no supporting disclosure in the specification or would not be enabled.
The biggest problem with provisional applications is that they often miss description for some important claim element (because claims are added at a later date, when provisional is converted to a full utility application). This could weaken your patent application during prosecution and open it for stronger invalidity challenge when the patent is issued and then asserted and challenged in court.
Daniel Basov
Solton Rosen & Balakhovsky LLP
110 Wall Street, 11th floor,
New York, NY 10005
212-344-1744
daniel.basov@srblaw.net
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Aisha Boue
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Hello there,
There is no need to file your claims in the provisional application (PPA). A Provisional Patent Application is only filed to secure your place in the line. Say, for example, you have an invention and need time to build a prototype or get the funds to do so. Yet, you do not wish for anyone to get ahead of you with this invention. For whichever reason, filing a provisional patent application helps you secure your place in the line.
BUT REMEMBER, you have a bar date of 1 year to file your Patent Application. You miss this date and you lose all claim of inventorship to your invention.
To help you get going, here's a link: http://www.patentexpress.com/patent-drafting-video/what-is-provisional-patent_63_5.html
And,
http://www.patentexpress.com/international-patents-video/how-do-you-foreign-file-your-patent-application_27_2.html
Any further questions can be addressed by giving the PatentExpress Team a call at (877)-794-9511
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