Skip to main content

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

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?

+ Read More

Attorney answers 5

Posted

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.

Bruce E. Burdick

Bruce E. Burdick

Posted

Not necessarily. You may want to rely just on your new filing date. However, as of March 16, 2013 that becomes very, very risky since the applicant with the earliest filing date IS legally the first inventor unless proven to have derived it (i.e. proven NOT to be an inventor) and the proceeding to determine that is stacked against success. After all the best Congress money can buy has distorted the patent system to squash the little guy and reward big business, just as Thomas Jefferson feared when he argued against issuing any patents at all.

Mark Raafat Malek

Mark Raafat Malek

Posted

I'm not sure I necessarily agree with your point of view on the new patent system. I think that the new patent system eliminates questions as to inventorship. It's pretty easy - just as the asker of this question has done, get your invention filed as soon as possible. I don't think there is anything wrong with filing a second provisional, then converting both of them at the same time. Of course, the disclosure in the second provisional won't receive the original filing date, but at least the inventor has filed for the protection.

Posted

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 UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to confirm the accuracy of this comment.

Posted

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.

Posted

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 comment is for information only, and must not be relied upon as legal advice.

Bruce E. Burdick

Bruce E. Burdick

Posted

And, you don't appear to know about the Pilot Program on Missing Parts that could lower your cost. Get a patent attorney and it may save both money and your rear.

Posted

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 at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

Can't find what you're looking for?

Post a free question on our public forum.

Ask a Question

- or -

Search for lawyers by reviews and ratings.

Find a Lawyer