Am I able to submit an update to an existing Provisional application?

Asked about 1 year ago - Brea, CA

I have an application I filed 09/2012 (utility), and how do I go about submitting am update to that application? In regards to some changes in functionality and materials. Will my filing date still be 09/2012 when I decide to pursue a Non provisional? Is there any specific.forms I would need to update my provisional and where in the application do I make reference to the previous provisional?

Attorney answers (5)

  1. Michael Alan Shimokaji

    Contributor Level 12

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    Answered . You are not able to update an existing provisional application. You will need to file another provisional application or a non-provisional application with your updated information.

    Michael
    www.shimokaji.com

    The answer provided is only for general information purposes and does not constitute legal advice.
  2. Clark AD Wilson

    Contributor Level 13

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    Answered . In addition to Mr. Malek's accurate response, I might add that any new previously-undisclosed material that you add in a new provisional will have an effective filing date as of that second new filing date. As a result, you should have a patent attorney look at your original provisional to evaluate whether it is possible to integrate your new functionality into the original disclosure in such a way that any eventual claims can still be supported by the original disclosure. It is tricky, so call a patent attorney.

    This comment is NOT LEGAL ADVICE. The question asker and any third-party reading this comment SHOULD NOT RELY... more
  3. Glen Nuttall

    Contributor Level 10

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    Answered . As my colleagues have said, you can't update a provisional application. Instead, you can file a new provisional application, and when you file your corresponding non-provisional application you claim priority to both provisional applications. The subject matter supported by the first provisional will have the 9/2012 priority date, but the newer subject matter will have the second provisional's filing date.

    That being said, you are almost at the 1-year expiration of your 9/2012 provisional application. Rather than filing another provisional application, it is probably a lot more efficient to get your non-provisional application prepared right now and include the new disclosure in the non-provisional application.

    (949) 390-2717 - Of course there's more to it! Plus, we don't have an attorney-client relationship. This brief... more
  4. Mark Raafat Malek

    Pro

    Contributor Level 14

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    Answered . This is a great question. You cannot "update" a provisional patent application, but the strategy for you is to file another provisional patent application. Thereafter, when you convert the originally filed provisional by September, 2013, you will need to claim the benefit of both of the provisionals. Please contact a patent attorney to go over the strategy in more detail. Also check the links below to see if they answer any of your other questions.

    The answer to this question is for informational purposes only and does not form an attorney-client relationship.
  5. Bruce E. Burdick

    Pro

    Contributor Level 20

    Answered . You don't update, you file a new provisional. You would keep the 09/2012 date as to all that is in the application filed on 09/2012 but not as to anything new. And, YOU have a fool for a client if you are your own attorney. This is work that should only be done by a registered patent attorney. Do it yourself and you will waste your money and end up with nothing worthwhile. Don't delude yourself into thinking you can do this properly yourself.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is... more

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