JSonnabend

[joelle]

A newbie question about having disclosed more than one invention in the same Provisional.

Suppose in the first section of a PPA, I disclose a method/machine to make a crusty, delicious french bread. And it is followed by a disclosure about a system/method to transport human to distant galaxies. The two are quite unrelated--yea, sure, reading between the line, it's actually about carnal pleasures causing divine transformation of the body...

Then in a regular patent application on the bread machine, I say that this application claims the benefit of my PPA, and the contents of which are fully incorporated herein by reference. 

Does this dual disclosure jeopardize my RPA? break any rule? and does the examiner care/read the second part of my PPA at all? Should the wording in the cross reference section of the application be changed to something like "only part of the content are incorporated herein by reference"?

Thanks in advance.

[dablueman]

A newbie question about having disclosed more than one invention in the same Provisional.

Suppose in the first section of a PPA, I disclose a method/machine to make a crusty, delicious french bread. And it is followed by a disclosure about a system/method to transport human to distant galaxies. The two are quite unrelated--yea, sure, reading between the line, it's actually about carnal pleasures causing divine transformation of the body...

Then in a regular patent application on the bread machine, I say that this application claims the benefit of my PPA, and the contents of which are fully incorporated herein by reference. 

Does this dual disclosure jeopardize my RPA? break any rule? and does the examiner care/read the second part of my PPA at all? Should the wording in the cross reference section of the application be changed to something like "only part of the content are incorporated herein by reference"?

Thanks in advance.

The examiner likely doesn't read the provisional at all, unless they find intervening art. Otherwise what is in the provisional doesn't matter. It also doesn't matter if there is other stuff in the provisional. The only thing that matters is if the subject matter that the non-provisional (you call "regular") application is claiming is disclosed in the provisional application that you're trying to claim priority to.

I'd stay away from using a phrase that says only part of something is incorporated by reference. Either incorporate the whole thing or cut and paste the specific parts you want to incorporate into the non-provisional. Otherwise you're just asking for problems.

[bleedingpen]

Do you think that you have a disclosed but unclaimed problem where you list multiple inventions in a provisional?

I seem to remember reading a case where the US practitioner cleaned up a foreign patent application (maybe japanese) and the portions that were deleted when the US practitioner cleaned up the foreign app were considered disclosed but unclaimed equivalents under the DOE.***


***(I have read so many cases, I very well may have made this case up entirely). 

[klaviernista]

Do you think that you have a disclosed but unclaimed problem where you list multiple inventions in a provisional?

I seem to remember reading a case where the US practitioner cleaned up a foreign patent application (maybe japanese) and the portions that were deleted when the US practitioner cleaned up the foreign app were considered disclosed but unclaimed equivalents under the DOE.***


***(I have read so many cases, I very well may have made this case up entirely). 

I don't recall that particular case, but I have read some cases where the court considered the incorporation of only a portion of a provisional application in a later filed non-provisional as a disclaimer of the non-incorporated portion(s) of the provisional.

[bleedingpen]

Do you think that you have a disclosed but unclaimed problem where you list multiple inventions in a provisional?

I seem to remember reading a case where the US practitioner cleaned up a foreign patent application (maybe japanese) and the portions that were deleted when the US practitioner cleaned up the foreign app were considered disclosed but unclaimed equivalents under the DOE.***


***(I have read so many cases, I very well may have made this case up entirely). 

I don't recall that particular case, but I have read some cases where the court considered the incorporation of only a portion of a provisional application in a later filed non-provisional as a disclaimer of the non-incorporated portion(s) of the provisional.

Does anyone have a case cite on this particular case?