Q: If I file a provisional patent myself but dont do a good job, can it be correct later on filing nonprovisional patent?
Hi:
I want to patent an idea. If I file a provisional patent on my own and hire a patent attorney later to file a nonprovisional patent on the same idea, can he/she modify the provisional patent and correct/modify any flaws that I possibly make in the provisional patent?
Thank you for your help.
A: The thing to keep in mind is that any application filing, provisional or otherwise, only holds a solid priority date for you if it provides adequate written description and enablement for your invention. So, while truly cosmetic things can be "corrected" without a problem, if new matter (not previously supported and enabled) is added, your invention will only have an effective priority date from the time the new matter was added and filed. If no disclosures or relevant competitive activity have occurred since the original filing, it may not be an issue. A competent patent attorney should be able to help you evaluate the situation.
A:
Yes, this happens all the time.
The problem is that if you do a poor job in describing your invention in your provisional application, but is done appropriately in the nonprovisional application, then you will be able to claim the priority only to the non-provisional application. What this means is that your provisional application will not be worth much.
There are some good reasons to file provisional applications, but I generally advise clients to avoid filing provisional applications and to just file non-provisional applications.
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