Can I use a provisional patent application I recently filed as part of new, related provisional patent filing? 5 Answers as of January 12, 2011

I recently filed a provisional patent for a process and method of testing, certifying and validating a material improvement process. I would like to file another provisional patent application and reference the prior provisional patent testing means as a way of certifying that the new material processing method has been improved.

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DANIEL NESBITT | Hasse & Nesbitt
Yes, your second provisional specification can make a specific, express reference to the first provisional application, including "incorporating (it) by reference". Technically, however, the second provisional application cannot claim "priority" to any other patent application (such as your first provisional application). You can also copy and paste into the second provisional application, the specific needed content from the first provisional application.
Answer Applies to: Ohio
Replied: 1/12/2011
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Yes but be very clear in the patent that it is an improvement over the original patent - note that this could be used in combination with some of your actions to bar your obtaining of a patent on the entire second patents's material. The material in the first provisional that is in common with the second provisional may not be patented if it was disclosed despite the fact that there were provisionals filed for both of them. You cannot just extend the length of a provisional by filing another provisional with minor changes to the first provisional if there has been a disclosure.
Answer Applies to: Oregon
Replied: 1/6/2011
Fish & Associates, PC
Fish & Associates, PC | Robert D. Fish
Provisional applications cannot claim priority to another provisional, or anything else for that matter. But a provisional can incorporate materials by reference provided they are publicly available. The best strategy is to copy relevant materials from the earlier provisional into the new provisional. When you eventually file your utility application, you can claim priority to any number of provisionals or utilities, so long as those earlier applications are still pending. Thus, for provisionals, a utility can claim priority back one year.
Answer Applies to: California
Replied: 1/6/2011
Malhotra Law Firm, PLLC
Malhotra Law Firm, PLLC | Deepak Malhotra
You can refer to it but doing so has no legal effect. A provisional application is designed to get you a filing date, providing a regular application is filed within a year of the provisional filing date, and provided that the provisional meets "best mode" and "enablement" requirements of a regular patent application. In my experience, many provisionals are seriously flawed and may not provide a filing date.

The patent claims of a patent application define the scope of protection being sought. Any subcombination of disclosed elements can be claimed.

To answer your question, if you've made improvements, you can file a new provisional that discloses everything from the previous application and also discloses the new material in connection with additional figures. Then in your regular application, your claims can focus on the new subject matter, the old, or a combination.

I strongly recommend that any provisional be drafted by a patent attorney as if it was a regular application to increase the chance that the resulting patent will be valid and infringed.

The patent cases are a minefield of traps for patent drafters who do not keep up on the law and do not employ best practices. The provisional will be part of the file history and mistakes made may not be curable. Many applications drafted by professionals are found to be invalid. Amateurs don't stand a chance.

Also, be aware that foreign filings will be due in one year from the provisional filing date.
Answer Applies to: Washington
Replied: 1/5/2011
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
No you cannot because no provisional application may claim priority from another provisional application. What you can do is to file the new provisional application separately and then one year from the filing date of the oldest provisional application file a non-provisional application that claims priority to both provisional applications. However, the filing date of any "new matter" included in the latest provisional application will be the effective filing date of the claims of the non-provisional application which refer to the disclosure, hence new matter, in latest provisional application.
Answer Applies to: California
Replied: 1/5/2011
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