Reliance on Provisional Patent Disclosure

Provisional apps are not examined, and yes, if a priority date situation arises, the provisional app will be examined to see if in fact it provides priority for the subject matter being claimed in the non-provisional app. If the non-
provisional app claims more than what was disclosed within the provisional app, the non-provisional app is still valid, it simply will not be accorded the priority date of the provisional app for that particular subject matter disclosed and claimed only in the non-provisional app - the priority date, in that case, will be the date of the filing of the non-provisional app.

Hi,

A provisional locks in priority date for what it discloses providing that it has 35 USC 112 support (except for best mode). Over the years, I've had to go into the provisional even during prosecution, and yes; court cases especially go into them. Attacking the priority date, allows for more prior art to come in against the patent.

When you file the non-provisional with new matter not covered in the provisional, all that happens is the new matter is given the priority date of the filing date of the non-provisional filing. In other words you won't get the benefit of the provisional filing date for the new matter. The non-provisional isn’t invalidated.

Please keep in mind that foreign countries, like Europe, have stricter requirements for provisional support than the US. Given all this, if you file a provisional and need to rely on the priority date, then it has to be written well - almost as good as a non-provisional.

Hope this helps,
Mary