Vincent LoTempio

My mission as an IP Attorney is to help people recognize, protect and profit from their good ideas. As a Registered Patent Attorney based in Buffalo, New York, I focus on all types of Intellectual Property law. As an IP attorney, I file patent and trademark applications in the United States and abroad. I manage large corporate patent and trademark portfolios, and have established associations with hundreds of Intellectual Property law firms around the world. I have extensive experience in patent and trademark prosecution, patent and trademark infringement litigation, trademark registration and copyright registration. Call me TOLL FREE: 1-800-866-0039 to protect your ideal today. LoTempio Law Website File A Patent File A Trademark File A Copyright YouTube Twitter

3 Comments

  1. Clifford D. Hyra
    April 22, 2010 @ 1:32 pm

    I agree with you that it is important to draft provisional applications to look like nonprovisional applications. In fact, I would go further than you and suggest that a provisional application should include one or more claims if possible, even though that is not required.
    Including at least some broad claims makes sure you have the language in your provisional application that you will want to use when you file your nonprovisional, making the support for your claims more explicit. It also may help support foreign filings.
    That said, I think you should be more clear that you CAN include additional subject matter in your nonprovisional application. In fact, in my experience that almost always happens.
    You just have to be careful to segregate that subject matter in the claims, because priority is determined on a claim by claim basis. So some of your claims may be supported by the earlier provisional and will get the earlier date, while other claims that are not will get the later nonprovisional filing date.

  2. Vincent LoTempio
    April 22, 2010 @ 1:59 pm

    Thank you Clifford for your comments.
    A common belief is that you can save time writing provisional patent applications by omitting the claims. While it is true that claims are not required for a provisional patent application, I believe that it is not possible to write an effective patent specification without writing claims.
    And it is true that some foreign countries will not recognize the provisional as a priority document if it does not contain claims.
    You’re probably right about this information getting lost in the body of my text:
    “If the new matter is not disclosed in the provisional application, then the new matter will only get the benefit of the later filing date, which defeats the purpose of having filed the provisional application in the first place.”
    So, yes you CAN add information in the nonprovisional application but it will not receive the filing date from the earlier filed provisional patent application.

  3. tom
    April 22, 2010 @ 8:59 pm

    Well done! You echo my thinking on provisionals.