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How to convert a provisional patent application to a non-provisional patent application?

Oakland, CA |

Hi,

I submitted a provisional patent application a month ago and I want to convert it to a non-provisional patent application, what is the procedure? Can I modify/enhance the claims in the non-provisional patent application? If not, how can I fix it?

Thanks,
David

Attorney Answers 6


  1. Best answer

    Hi David - this is a somewhat complicated process. In order to claim the benefit of the filing date of your provisional patent application, your claims must be fully supported by your specification. Claims drafting is very difficult, so I highly recommend engaging a patent attorney to draft your claims, at the very least. Drafting the claims is going to be very dependent on what you submitted for your provisional patent application. It is possible for you to submit claims that are new, i.e., not disclosed in your provisional patent application, but you will not get the benefit of the filing date of the provisional patent application then. Check out the links below - they may be of some help to you. Many patent attorneys will give you a free telephone consultation. Try to call someone and see if you can get some assistance that way.

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


  2. Patent Law is very technical, and very difficult. You should hire an Attorney.

    I represent Employers, but I can recommend Worker Attorneys in So Cal if you ask.


  3. Yes, it is legally and practically possible, with some date limitations, but unfortunately it is not a layman's job. You need a patent attorney.
    As a matter of fact, if you wrote the provisional yourself, you may find it more difficult to file a non-provisional application.
    good luck

    USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.


  4. David: If you are hoping to derive any monetary benefit from patenting your invention, my advice is to hire a competent patent attorney to handle this task. Not only is patent drafting and prosecution exceedingly technical, the rules are changing continually. It's like trying to climb Mount Everest during an earthquake. We patent attorneys are investing incredible amounts of time and money striving to keep abreast of these changes and to develop a new set of Best Practices, as the playing field continues to shift.

    If, on the other hand, you are interested only in putting a patent application number on your resume, you could get some guidance from a copy of "David" Pressman's book from Nolo Press entitled "Patent It Yourself" and then file whatever documentation seems pertinent.

    The specific answer to whether you "can" modify/enhance the disclosure would depend on various factors including the existence of any prior disclosures or even offers to sell an embodiment of your invention and whether or when other "prior art" exists. The old principles that applied before Congress enacted the America Invents Act seem not applicable to your situation, so it would be wise to consult a professional who demonstrates familiarity with the latest updates.

    This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance. -Gerry J. Elman, J.D. Elman Technology Law, P.C. Swarthmore, PA www.elman.com


  5. Yes under most circumstances you should able to modify the claims but without assistance of a patent attorney, your chances of getting a useful patent are greatly diminished.

    Disclaimer: This answer does not constitute legal advice and does not create an attorney-client relationship.


  6. As far as modifying or enhancing the application -- adding more detail and/or new subject matter -- you have several options available, and you should work with an attorney. In general, it is usually NOT a good idea to "convert" the provisional into a non-provisional. Instead, it is almost always best to "claim priority" to the provisional.

    This comment is NOT LEGAL ADVICE and is posted for informational purposes only. I am not your attorney; you are not my client. Both you and any other person reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to get the legal advice you are seeking.