Common Patent Questions: Can You Leave Claims Out of Provisional? Can You Add Claims Later?
To the first question, yes — the same way you can jump out of a flying airplane without a parachute. Just because you can do it, doesn’t make it a good idea.
To understand why, you need to understand how a provisional is treated by the patent office.
When you file a provisional patent application, the United States Patent and Trademark Office (USPTO) does NOT examine your provisional. They merely ensure that it was filed with a cover sheet and proper payment. You can print out this post and file it as a provisional application and the USPTO will accept it. Do you think this post will protect your invention? Content matters.
When does a non-provisional get examined? When your non-provisional patent application gets examined, then the Examiner may allege that your claimed invention is known or obvious over some public disclosure made between the time when your provisional and non-provisional were filed.
The Examiner will basically say: prove it. Prove your invention, as defined by the claims, was filed in your provisional application.
The best way to do this is to point to the presence of your claims in your provisional application. This is known as “perfecting priority” and it is the only time the USPTO usually ever looks at your provisional. Because the whole point of filing a provisional is to secure a priority date, I highly recommend that you file claims in any provisional.
The invention is not what’s in your head. The invention is not what you meant to write. Your invention is what’s in the claims of your patent application.
Which leads to my favorite saying: “If it’s not in the claims, then it doesn’t exist.”
Can you add claims later? Yes, but then you may only get the priority date of the application when you added the claims. Moral of the story, protect your invention right the first time.
Are you interested in protecting your invention right the first time?
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