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Patent

Can one file provisional patent appliction then the Utility Patent?

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Attorney answers (3)

Reputation Level 18
As noted by my colleague, yup.

Be forewarned though - if you add new information to your subsequently filed "regular" patent application, that disclosure is NOT afforded the priority date of the provisional application.

This comes into play fairly often, especially when the invention is still in research and development and changes during the one year period before the regular application must be filed and/or a non-patent attorney files the provisional application and does not draft if correctly (which is nearly always).

The consequence of some information not being afforded the priority date of the provisional is that another application may be filed which does include that information (and so your claims may be anticipated or obvious in light of that senior application's disclosure) or you may be time barred from inserting certain information in your regular application that you need to disclose to enable your claims --- or any number of other negative consequences. In short, if you're claiming an invention in a rapidly changing field, a provisional application may not provide you with the protection you think it might.

FYI - The phrase "utility patent" simply refers to the type of subject matter being claimed (i.e., any "process, machine, manufacture, or composition of matter") and is contrasted with the other two types of patents: design patents and plant patents. A provisional application, therefore, can be a "utility patent." A non-provisional application is (awkwardly) simply called a "regular" application or a "non-provisional" application.
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Reputation Level 9
Yes, that is the point of the provisional application. The provisional application essentially holds your place in line and must be followed with a regular utility patent application within one year.

Reputation Level 9
Yes.
2 people marked this answer as good

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