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   Is this a good reason to file a PPA?
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   Author  Topic: Is this a good reason to file a PPA?  (Read 3475 times)
Timothy Pamatmat


Posts: 2
Re: Is this a good reason to file a PPA?
« Reply #5 on: Oct 22nd, 2007, 3:23pm »
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Just becuase the claim set may be different does not mean you will lose your priority date.  It is really about subject matter.   As long as no additional subject matter is disclosed in the non-provisional, you should be able to receive the filing date of the provisional.  However, any new material would receive another date, the date of filing the NPA.

While adding new subject matter could be a possibility, I was really referring to changes in the spec that might be construed as new subject matter. Such as broadening a description of an element I inadvertently narrowed or changing, altering or adding to definition of some generic term in order to better support his/her claim set. But this is off topic since an early priority date was not my main reason for filing.
Can you clarify what you mean by Festo?  I am not sure I understand.   Are you speaking in terms of changing the claim set and if so, would that operate as a prosecution history estoppel?

I was attempting (vaguely I admit) to compare protecting your IP from being stolen via a provisional to protecting your IP from being infringed via a lawsuit. In the first case you have this imaginary person with average skill in the arts, omniscient knowledge of his prior art, and now average creativity as well to fight for you- for free. Compare this to the second case where you are protecting your IP as well but with additional legal complexities, festo among others, and significantly higher cost.
I agree with others on this forum that if your only objective is to protect your IP from being infringed then a provisional is a waste of time and money, there is no real benefit that I can see. However, if you want to protect your IP from being stolen while you evaluate its value, then a provisional can provide this protection.
My understanding is that provisionals do not have 102(e) dates because they are not published as required in 102(e), while non-provisional applications do have 102(e) dates.    Accordingly, your provisional would become prior art on the date it was made available to the public (generally on or near the date a non-provisional claiming priority to that provisional  is published).  
As long as your provisional is enabling of its described invention, and your non-provisional discloses everything that your provisional discloses, then the 102(e) date of the non-provisional will be  based on the filing date of the provisional and that date will be attached to included description from the provisional.   That is the prior art effect you are seeking, but the prior art effect comes from the non-provisional and its priority claim rather than coming directly from the provisional.  
In many (probably most) cases, you can accomplish that effect even if you need to add new material at the filing of the non-provisional and even if the claims in the non-provisional are not enabled by the provisional.   You simply need to make sure all of the provisional material you want as prior art is included in the non-provisional as well.  
By way of illustration, if you describe a rhino in the provisional and describe an earthworm but no rhino in the non-provisional, your description of a rhino is not going to be prior art based on the provisional filing date, but rather on the date the provisional is made available to the public.

Thanks Isaac for clearing up the mechanics, it was very helpfull.
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