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Question about provisional filing
« on: Jun 2nd, 2006, 12:03pm »
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Hi,  
 
Can someone please advise me about provisional filing? What is the difference btw provisional filing vs formal filing in terms content? Does provisional mean preliminary or more specifically, can I use preliminary data instead of those from vigorous studies? Can I add new things to it later on for the formal filing? Such as more detailed description/analytical data to those included in a provisional filing?  
 
Thanks in advance!!
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Re: Question about provisional filing
« Reply #1 on: Jun 2nd, 2006, 12:35pm »
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Provisional applications must meet the exact same legal standards as a real patent application.  Period.  No difference at all -- except that your provisional application need not include claims.  However, it must "enable" any claims you'd eventually like to include and can include claims.  So, I'd suggest including some.
 
Provisional applications exist for one purpose and one purpose only -- to defer allowance and expiration of a patent by up to one year.  They're useful if you think your patent will be most valuable at the end of its term rather than its beginning.  This is of prime importance in the life sciences where length FDA approval can delay bringing a treatment to market and generics are typically queued up on the day the patent(s) expire(s).
 
Here's my FAQ on that:
http://iveylaw.com/index.php?option=faq&task=viewfaq&artid=4& ;Itemid=5
 
Regards.
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Re: Question about provisional filing
« Reply #2 on: Jun 2nd, 2006, 12:51pm »
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The value of a provisional application is that it establishes a “priority date” for the INFORMATION THAT IT CONTAINS.  The priority date of a patent application is important in determining what is prior art that can be used to reject the claims of your application.
 
“What is the difference btw provisional filing vs formal filing in terms content?”
 - The provisional application does not require claims (but typically at least one claim is submitted) nor are signed oaths required from the inventors.  Also, the format is not particularly important.  For example a research paper can be submitted as a provisional application.
 
“... can I use preliminary data instead of those from vigorous studies?”
 - Yes.  BUT if it turns out that the data from the vigorous studies are required to support or enable your claims, then you would not benefit from the priority date of the provisional application.
 
“Can I add new things to it later on for the formal filing? Such as more detailed description/analytical data to those included in a provisional filing?”    
 - Yes.  BUT if the detailed description/analytical data are needed to support or enable your claims, then you would not benefit from the priority date of the provisional application.
 
On the positive side, filing a provisional application does lock-in the priority date for whatever you file.  So if you are planning to disclose the information you currently have, or if you are concerned that a competitor may be working on a very similar invention, it may be a wise investment ($100 filing fee) to file a provisional application on whatever you have at this time.
 
Richard Tanzer
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ram
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Re: Question about provisional filing
« Reply #3 on: Jun 2nd, 2006, 12:59pm »
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Can someone please advise me about provisional filing?

 
Most of the countries offers inventors the option of filing a "provisional" (also called temporary/informal/incomplete application) application that has relaxed filing requirements and reduced filing fees. Provisional applications are typically used when inventors are not ready to file a regular application (formal application), but wants to establish an early priority date.
 
Quote:
What is the difference btw provisional filing vs formal filing in terms content?

 
If you want to file a provisional application, you must include at least a description of the invention but it need  not require the specified format or other items normally filed in connection with regular patent applications (e.g., abstract, claims, inventors oath/declarations, invention disclsoure statement etc.). Also provisional applications are not examined generally except for formalities, cannot be amended( i think it can be amended in countries like canada), and in most of the countries, a regular application should follow the provisional application within 12 months. Provisional applications are not issued/granted, rather it is merely used to establish a priority date.
 
Quote:
Does provisional mean preliminary or more specifically, can I use preliminary data instead of those from vigorous studies?

 
You should ensure that that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed regular application, i.e. the preliminary data you are adding in the provisonal should be adequate enough to be regarded as a patentable subject matter.
 
Quote:
Can I add new things to it later on for the formal filing? Such as more detailed description/analytical data to those included in a provisional filing?  

 
There is no requirement that the written description and any drawings filed in a provisional application and a subsequently-filed regular application be identical. However the claims of the regular (formal) application, need to be sufficiently supported by the disclosure of the provisional application to receive the benefit of the filing date of the provisional application.
 
Good Luck.
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ram
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Re: Question about provisional filing
« Reply #4 on: Jun 2nd, 2006, 1:31pm »
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Provisional applications exist for one purpose and one purpose only

 
Jim, i can think of a situation, where filing a provisional is advantageous over non-provisional application:-
 
Suppose the inventor is from US, and would like to file a patent application only in india or in an other foreign country. If he doesn't have much time, and if the inventor doesn't know the legal implications of patenting in foreign countries, then he can just file a provisional application instantly in US with less filing fee, buy some time (in this case by paris convention for 12 months) before he proceeds to file a regular application in india by claiming priority from the US provisional application, and ultimately abandon the US provisional application, thereby saving considerable costs.
 
 
 
 
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