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Author Topic: To include (or not?) uses (apps) in PPA/NPA?  (Read 1111 times)

jolly_cow

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To include (or not?) uses (apps) in PPA/NPA?
« on: 05-03-07 at 05:00 am »

Law Gurus!

Would appreciate if you can spare some wisdom for me
on the following:

I am on a shoe-string budget. Would like to file provisional myself (have done it in the past, once.). Ofcourse when the deadline approaches I  
will hire real patent attorney to draft NPA.

My Q: I have a new base-invention that actually
uses the previous PPA1. The process is definitely new  
for PPA2 when in combination of PPA1, but as a standalone (not in combination of PPA1) can also be
seen as an improvement to any  other existing ones in its field. I did "reasonable" search   and just convinced myself to go ahead with PPA2.  

I have several applications (uses) in several markets
that can utilize the basic process of the PPA2.  The applications (uses) of  PPA2 in different makets need little fine tuning (which include different architectures and different flow-charts e.g. financial inst, educational inst etc. have different requrements and hence different architectures)  to the base PPA2.

Should I list all the applications specifically in my PPA2.
And also try to generalize a bit? My goal is to hide
as much as possible from competition until we release  
products. How can I go about? and at the same time
protect my IP on several uses (applications) in several
markets in varying forms..

Ofcourse all the time I am referring to software patents

Finally, how can a PPA be delayed for publishing after
18 months? What are the criteria?

Many thanks in advance!
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Wiscagent

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Re:  To include (or not?) uses (apps) in PPA/
« Reply #1 on: 05-03-07 at 07:10 am »

As has been written many times before on this forum, for a provisional patent application to establish a useful priority date for its corresponding regular patent application; the provisional patent application must meet the requirements of 35 USC 112 relative to whatever is claimed in the regular application.  In other words, there are no reduced disclosure requirements for the provisional app' compared to the regular app'.

  Of course when the deadline approaches I will hire real
  patent attorney to draft NPA.  

Why?  If you trust your skills to write the provisional application, then you should also trust your skills to write the regular application.  If you feel that you would benefit from hiring a professional, then you should hire a patent attorney or patent agent now to write your provisional app'.

  Should I list all the applications specifically in my PPA2.  

If you plan on including claims in your regular application that relate to "all the applications", then yes, you should list and discuss and explain them.

  My goal is to hide as much as possible from competition
  until we release products.  How can I go about?

When you file your regular patent application you can include a non-publication request IF you do not plan on filing a corresponding application outside of the United States.  With a non-publication request, the application remains confidential until a patent is issued.

Good luck.
« Last Edit: 05-03-07 at 07:11 am by Wiscagent »
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Richard Tanzer
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jolly_cow

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Re:  To include (or not?) uses (apps) in PPA/
« Reply #2 on: 05-03-07 at 07:57 pm »

Thanks a bunch Wiscagent!

I have a follow up Q: If an NPA has enhancements to PPA,
does it mean NPA wont get priority date as PPA?

I understand that PPA can be as exhaustive as NPA..

(NPA -> non-prov or regular pat app)

Appreciate your feedback very much!
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Wiscagent

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Re:  To include (or not?) uses (apps) in PPA/
« Reply #3 on: 05-03-07 at 08:20 pm »

The priority date is determined on a claim-by-claim basis (at least in concept).  So whatever claims are fully supported (i.e. described and enabled) in the provisional application should get the benefit of the filing date of the provisional application.  

But if a claim relies (even partially) on matter introduced in the non-provisional application, then that claim should have the filing date of the non-provisional application as it's priority date.
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Richard Tanzer
Patent Agent
 



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