After filing Regular patent applications, can I file a Provisional, which would be the basis of Continuation filings after I go public?


I previously asked this question: I have filed non provisional, regular utility patents applications. I will be also filing continuation applications. Can I add or amend claims after the content is made public? Such as in a crowd funding campaign?

I received answers for this question, I'm asking for responses to this new part.

I believe that new material can be added in the continuations, and that the new material will have the continuations filing date, not the original application's filing date.

New part of question: Can I... 1. ...file a Provisional Patent for the new material... 2. ...go public with all the info contained in the various filings... 3. ...then later file the continuations, based on the new material in the Provisional?

I would do this because, I believe,... 1. ... it would allow me to protect my added information... 2. ...while going public to raise funding... 3. me more time to come up with the fees needed for the continuation filings.

I understand that the provisional would not alter the time limits for the continuation filings.

Paul Page

Posted 2018-08-21T00:05:40.550

Reputation: 107



Yes - you can file a provisional with the new material and then later file a continuation-in-part that claims priority to the parent and also claims the benefit of the provisional. This assumes the parent is still pending and it is within a year of the new provisional. If done correctly, the new material in the continuation-in-part gets the benefit of the provisional filing date.

This does only work in the U.S. because (to my knowledge) only the U.S. has the concept of a continuation-in-part and very few other locations have provisional applications. However, the continuation-in-part may not be as valuable as it might appear. If all of the claims in the application depend upon the new matter in the specification for support, then it could just as well have been a brand new non-provisional application getting the benefit of the new provisional.

George White

Posted 2018-08-21T00:05:40.550

Reputation: 21 648

That is great news! Thank you so much for your help. – Paul Page – 2018-08-22T01:47:09.627

Disclaimer: this works only in the US. – DonQuiKong – 2018-08-22T06:10:22.797