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   Can a PPA be as complete as an RPA?
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   Author  Topic: Can a PPA be as complete as an RPA?  (Read 2771 times)
shannu
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Re: Can a PPA be as complete as an RPA?
« Reply #5 on: Oct 8th, 2007, 5:03am »
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I have been into this field for six years and have been claiming a broad genus claim in case of a product PPA and a set of broad claims in applications such as process, combination, polymorphs etc
 
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Wiscagent
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Re: Can a PPA be as complete as an RPA?
« Reply #6 on: Oct 8th, 2007, 10:05am »
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"... changes to the claims when the NPA is filed may be construed as invoking Festo.  ..."
 
One way to avoid this possibility is, when drafting the provisional app'n write the claims, just as you would for a regular app'n.  But only actually file the provisional app'n with a broad claim.
 
An advantage of this approach is that you can be sure to file the provisional app'n with support for the full set of claims.  If you do not write the full set of claims, you may have support issues when you go to file the regular app'n.
 
Of course this whole discussion omits the question of which is better for an applicant - to have the claim granted one year sooner, or to have the expiration date of the patent be one year later.  For most applicants, it is more important to have the patent granted sooner, and not worry if the patent would expire in 2027 or 2028.
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Richard Tanzer
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Isaac
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Re: Can a PPA be as complete as an RPA?
« Reply #7 on: Oct 8th, 2007, 11:01am »
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on Oct 8th, 2007, 10:05am, Wiscagent wrote:
One way to avoid this possibility is, when drafting the provisional app'n write the claims, just as you would for a regular app'n.  But only actually file the provisional app'n with a broad claim.

 
If claims in a provisional are going to create a Festo issue, (and I'd argue that there is no such Festo implication) it will be because the claims in the provisional are broader than those filed or ultimately allowed in the later non-provisional.   I don't  understand how filing a broad provisional claim is going to prevent Festo issues.
 
That said, I have always filed the provisional with a broad claim and haven't given a thought to the Festo implications.   OTOH, I haven't filed a provisional in a couple of years.
 
« Last Edit: Oct 8th, 2007, 11:01am by Isaac » IP Logged

Isaac
Wiscagent
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Re: Can a PPA be as complete as an RPA?
« Reply #8 on: Oct 8th, 2007, 3:48pm »
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Good point Isaac.
 
Would a better approach be to file the provisional with one small part of the (potential) claim set?  That way, when you file the regular application you would be broadening (or adding broader) claims.
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Richard Tanzer
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Re: Can a PPA be as complete as an RPA?
« Reply #9 on: Oct 8th, 2007, 4:44pm »
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I vaguely remember reading somewhere (maybe here) about the idea of including a single omnibus claim in a provisional.
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