Provisional patent, completeness of content (include claims?)

[JimIvey]

@bardencj:  2 thoughts come to mind.

First, yes, if you want to file a complete and lengthy claim set well beyond the 3+20, the amount of fees deferred can be enough to make deferral real savings.

Second, you mentioned a specification that supports broad coverage and I think others have said something similar.  It sounds as if that statement is made under the belief that a less detailed specification provides broader claim coverage.  That belief is mistaken.  Breadth is determined by the claims, not the spec.  And, strength of the claims is enhanced by a more detailed spec.  Note that "best mode" is included in Section 112, paragraph 1.  So, skimping on best mode in a provisional application can render it inadequate.

In fact, following up with the real application a year later requires updating the best mode and can require significant additional disclosure.  If the original application had been filed as a real application and not a provisional application, there would be no requirement to update best mode through the entire pendancy of the application.  As a result, significant amounts of money/effort can be saved and any new developments in the subject technology can be protected as trade secret if so desired.

Wow, I'm really convincing myself provisional application are a bad deal -- more so that I thought.

@Bob Roberts: Yeah, I see that, too.  Big, huge application and less than a week to get a priority date.  If they have some document(s) that look(s) like it could be enabling but would never be filed as a real application, I can file that as a provisional and buy myself (and the client) some time to organize the thing into the form and flow of a US patent application.  But I explain the requirements of Section 112, p 1, to the client and explain the risks and make sure they understand them.

I have to be careful.  Sometimes clients think I'm scolding them.  Then I explain that I want them to just not blame me if things don't go well for reasons that were beyond my control, just trying to make their expectations of me realistic.

And, I make it clear that I don't recommend the approach of just filing whatever documentation the client has on hand as a provisional.  I've met other practitioners who actively recommend that approach.  I don't agree with them, clearly.

@DogDayPM:  I like that idea.  It avoids the best mode problem I mentioned above.

Regards.

[Isaac]

In fact, following up with the real application a year later requires updating the best mode

Are you sure about that?  If you new stuff (cannot really call it new matter) to the non-provisional or a CIP, then yes, I think you have to update best mode, but where the non-provisional is drawn to an invention supported by the provisional, I'm not aware of any requirement to update the best mode simply as long as the provisional satisfied the best mode at the of the provisional filing.  Certainly there is no need to update best mode when filing continuations and divisionals.

[JimIvey]

Unless the law has changed in recent years (and I don't believe it has), you are required to update best mode in a CIP.  Jeez, it's been a long time since I read that case, but I believe the requirement applies to all matter disclosed in the CIP, whether new or old.

It seems that most treat a real application claiming priority of a provisional application as a CIP of the provisional.  I don't think I've ever seen a real application that is an exact duplicate of the priority provisional application except for claim additions/modifications -- akin to a continuation/divisional of the provisional application.  In that latter situation, no, I'm not sure that best mode must be updated.

Regards.

[Isaac]

Unless the law has changed in recent years (and I don't believe it has), you are required to update best mode in a CIP.  Jeez, it's been a long time since I read that case, but I believe the requirement applies to all matter disclosed in the CIP, whether new or old.

Perhaps it was Applied Materials Inc. v. Advanced Semiconductor Materials America, Inc., 98 F.3d 1563, 1579 (Fed. Cir. 1996).

At least that's what turned up when I tried to answer the question myself.