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[doug vagedes]

I was trying to find a specific answer about provisional applications, but did not so I thought I would post my question.  Here is a hypothetical situation.  I have an idea and file a provisional application based on this idea.  Then, based on further market research or prototype development, the concept changes, new claims developed, old claims do not apply anymore, etc.  When I file for the patent, can I change the application to include the re-designed idea with these different and better claims?  I have heard that the patent application has to be pretty much what the provisional says.  So therefore, I may have hurt my chances of getting a stronger patent.  Is this correct?  Any clarification is appreciated.

[Robert K S]

You don't necessarily need to file claims with a provisional (though it can be a good idea).

The important thing in the case you describe is not the claims themselves but whether or not they are supported by the specification.

You are free to claim priority to the provisional application and you may rely on it for whatever inventive content it actually enables; however, if the examiner uncovers prior art references that anticipate or render obvious your invention that were published between the time of your provisional filing and your nonprovisional filing, you will not be able to rely on the provisional filing to overcome the references.

To answer your question, no, a provisional application cannot "hurt" you, except insofar as it may needlessly lose you a year of life off of your patent if it turns out that your priority claim to it was for naught.

[MYK]

You don't necessarily need to file claims with a provisional (though it can be a good idea).

The "common wisdom" posted here in the past is that if there are no claims, other countries might refuse to grant priority based on the provisional's filing date.  If not filing foreign, then it's probably not a problem.

To answer your question, no, a provisional application cannot "hurt" you, except insofar as it may needlessly lose you a year of life off of your patent if it turns out that your priority claim to it was for naught.

With the caution that if you depend on a badly-written provisional (e.g., filing a journal article the day before it publishes), your priority claim might fail.

[JimIvey]

I think you've got your answer already, but I'll go ahead and answer it with my own spin.

There's no requirement that a real application claiming priority of a provisional application match its content in any way.

However, the provisional application is only useful to the extent it properly supports a claim of the real application (either as filed or as ultimately amended) in the very same manner required for support of claims by real applications.  The law is exactly the same -- 35 USC Section 112, first paragraph -- for both provisional and real applications.

So, to the extent you claim new stuff (not in the provisional), those claims will have an effective filing date as of the real application, not the provisional.  And, as MYK noted, to the extent your provisional application was not prepared as thoroughly and carefully as a real application, no claims of the real application will benefit from the earlier filing date of the provisional and the provisional was a waste of time and money.  Most provisional applications are exactly that -- a total waste of time and money -- in my humble opinion.

Regards.

[doug vagedes]

So, to the extent you claim new stuff (not in the provisional), those claims will have an effective filing date as of the real application, not the provisional.  And, as MYK noted, to the extent your provisional application was not prepared as thoroughly and carefully as a real application, no claims of the real application will benefit from the earlier filing date of the provisional and the provisional was a waste of time and money.

Thank you all for the great information.   That's exactly what I was concerned about.  I have to believe that this situation applies to many provisional applications un-knowlingly to the inventor.  Things change as the prototype is being developed and again through market research.   I think I'll stick with the professionals.

[JimIvey]

I have to believe that this situation applies to many provisional applications un-knowlingly to the inventor.

Provisional applications are probably the most misunderstood and misused things in US patents today -- and for the last 15 years (since they were created).  And I don't mean just by pro se (for self) applicants; professionals have misunderstood and misused provisional applications since June 1995.

FWIW, here's my aging FAQ on the topic.

Regards.