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   A preliminary provisional filing?
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   Author  Topic: A preliminary provisional filing?  (Read 4466 times)
Vlad_Loyola
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Re: A preliminary provisional filing?
« Reply #5 on: Apr 20th, 2007, 2:34am »
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Provisional must have specification and drawings that later will create basis for your claims and whatever you will donate to public (if not claimed); therefore, you have to be very carefully on what you say in your specification / drawings - it should on one hand be sufficient enought to enable all of your future claims, but at the same time not too disclose too much
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Bill Richards
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Re: A preliminary provisional filing?
« Reply #6 on: Apr 20th, 2007, 5:49am »
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To expand upon Vlad's post and to address some of X's specific questions, I offer the following:
The PPA does not have to be in the same format and word-for-word what an NPA would be.  It just must, as Jim points out, meet all the requirements of an NPA; enablement, best mode, that the inventor has actually invented what he claims to have invented, etc.  A PPA need not have drawings, formal or informal.  But, if drawings are "necessary for the understanding of the subject matter", then something must be included.  Photographs will work, but they need to be clear and meet all the requirements.  For example, I was once handed a PPA that had been filed with photographs.  A bar date had already passed and the PPA filing date was needed.  Unfortunately, the photographs did not show the point of novelty and no patent was obtained.
On another point, not everyone agrees that one should not disclose as much as possible.  Particularly if one plans to file on-going applications (the proposed rules on continuations notwithstanding), a broad disclosure may be very helpful.  In addition, a broad disclosure (and I've seen this happen many times) can act as a defensive publication to keep competitors from getting patents in the same area.
Bottom line, there are many factors to consider.
« Last Edit: May 25th, 2007, 5:04am by Bill Richards » IP Logged

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JimIvey
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Re: A preliminary provisional filing?
« Reply #7 on: Apr 20th, 2007, 10:25am »
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The "legal requirements" are set forth in the first paragraph of this section of volume 35 of the U.S. Code.
 
Quote:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Sounds easy enough, doesn't it?  But wait, what exactly is "the invention" that the section refers to?  Is it some amorphous, vague idea of what the inventor thinks the invention is?  Nope.  It's the invention you'll claim in your non-provisional application.  Well, what will those claims be?  You should have some idea so you can decide whether your provisional application meets the requirements quoted above.
 
There are temptations to take shortcuts in the provisional since its sufficiency is unlikely to be determined by the examiner (much more likely to be fully tested when the patent is later enforced).  However, if you wouldn't take such shortcuts in a non-provisional, you ought to ask yourself what is the legal rationale for accepting such shortcuts.  I can't find any.
 
Regards.
 
P.S. Some mistakenly believe that provisional applications are not required to set forth the best mode contemplated by the inventor(s) for practicing the invention.  As you can see above, that belief is wrong.
« Last Edit: Apr 20th, 2007, 10:26am by JimIvey » IP Logged

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MrSnuggles
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Re: A preliminary provisional filing?
« Reply #8 on: Jun 22nd, 2007, 11:30pm »
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on Apr 20th, 2007, 2:34am, Vlad_Loyola wrote:
Provisional must have specification and drawings that later will create basis for your claims and whatever you will donate to public (if not claimed); therefore, you have to be very carefully on what you say in your specification / drawings - it should on one hand be sufficient enought to enable all of your future claims, but at the same time not too disclose too much

 
Be careful following this advice.  Failure to disclose best mode is grounds to invalidate a patent.  Patents are based, in part, on complete disclosure.  If you want to keep it secret, just rely on trade secret law and misappropriation.  You can't have your cake and eat it too.
 
Yes, you should be careful about unclaimed subject matter.  However, that is something that you can consider during prosecution or in a continuation or divisional filing once you observe unclaimed subject matter for which you may want protection.
 
As far as filing the manuscript as a "preliminary provisional filing," I've done very similar filings in my practice.  The attorney will review the submission (e.g., a research paper, manuscript, editorial, user manual, design document, code listing, or whatever) to ensure that sufficient description exists in the document to (1) enable at least one embodiment (2) provide a "best" mode (3) and provide support for expected claims.  Most design docs, research papers, etc., actually do a pretty decent job at explaining at least one "preferred" embodiment.
 
If the attorney is good, then s/he will also review the document to redact any admissions, remove dates that may indicate RTP or conception, and take out "patent profanity" (words that should be toned down in a patent application, such as "must", "always", "never", etc).
 
Although it's not required, I will usually draft at least one claim -- even on a "quickie provisional."  Because you can use the claims as self-supporting evidence of enablement, written description support, etc, I like to include them to focus on the expected protectable invention.
 
Typically, in my experience, a second provisional filing is drafted and submitted ASAP.  The 2nd provisional then is a conventional provisional application with all the bells and whistles.  When you file your non-provisional, do it by the first provisional's date, and claim priority to both provisionals.
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biopico
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Re: A preliminary provisional filing?
« Reply #9 on: Jun 23rd, 2007, 7:43am »
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on Apr 20th, 2007, 5:49am, Bill Richards wrote:
Particularly if one plans to file on-going applications (the proposed rules on continuations notwithstanding), a broad disclosure may be very helpful.  

 
agreed. but how broad though?  To put this into plain English:  
 
"Invention is like a woman's skirt: long enough to cover the subject matter is short enough to be interesting."
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