Odenton, MD asked in Intellectual Property and Patents (Intellectual Property) for Maryland

Q: Can I include a claim based on an old expired provisional patent application into a new application

The specification for the new application does not mention the concept on which the claim is based.

The old provisional application was authored by the same person as the new application.

The new application is based upon first to invent.

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
  • Patents Lawyer
  • Pittsboro, NC

A: If you are seeking to file a patent application to claim something in a provisional application by some other inventor -- that does not work as you need to be the original inventor. You cannot file a patent application on a good idea that someone else had -- even if they did not seek to claim that invention in a later patent application.

If you filed a provisional application A and then filed a non-provisional application B before A expired and you want to claim material that was in A but not in B -- you may be able to do so if A was incorporated by reference into B.

You should consult with a patent attorney to walk you through this process.

I hope this helps.

Kevin E Flynn

Peter D. Mlynek
Peter D. Mlynek
  • Patents Lawyer
  • Moorestown, NJ

A: Yes. Assuming that the provisional application expired WITHOUT a regular patent application claiming priority to it was filed, then yes.

That is one of the advantages of filing provisional applications: they are kept as a secret, so if you change your mind during the next 12 months, you can abandon it without giving up any secrets or rights to them. You can file another application later, even years later, without the provisional application being cited against you. Of course, in the meantime, someone else might have invented or published the same invention, in which case you would not be able to get a patent on it.

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