Converting a Provisional Into a Non-provisional Application

Posted by Michael Shimokaji | Jul 11, 2014 | 0 Comments

Question: Claims not checked by a patent attorney included into a provisional application

I filed a most detailed provisional application a few months ago, where I also included claims just in case I would want later to do a conversion of the provisional into non-provisional. I am talking now to investors and want to hire an attorney to check my application before I submit it as a non-provisional (I might not do the conversion after all) claiming the benefit of the above-mentioned provisional one.

Given a very detailed specification uncontested by the examiner, if the claims are correctly formulated by an attorney in the non-provisional application to be filed later this year, but were not so well drafted in the provisional one, could this create a problem upon examination? Just because I could leave out but instead did include them in the provisional application?

Answer: If your provisional specification already has everything needed to support “appropriate” claims in a non-provisional application, you should not have a problem.

About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.


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