Multiple Provisional Patent Applications For One Invention

One provisional patent application may be the basis for an unlimited number of non-provisional patents. You can continue to file additional non-provisional applications claiming priority back to the same provisional as long as you file at least one non-provisional within 12 months of the provisional (exception: if you add ‘new subject matter’ that was not covered/anticipated by the provisional, you will need to make a Continuation-in-Part Priority Claim).

This implies that you can divide the provisional into two or more non-provisional utility patent filings that claim priority back to the same provisional application, as long as no new information is added to any of the applications. If you have more subject matter that you want to include, it should be filed in a new filing known as a Continuation-in-Part (CIP). In the case of CIPs, the new subject matter receives the patent priority date of the CIP’s filing date. In contrast, the previously disclosed subject matter retains its original patent priority date.

It should be noted that filing provisional applications with several innovations in the same filing carries a risk. In general, a single provisional application should not comprise numerous ideas. Why? Answer: If you do not pursue a non-provisional patent application on any of the concepts covered by the signal provisional (e.g., you decide to save it for later or keep it a trade secret), you will be out of luck, as all of the subject matter in the provisional may still enter the public domain if you claim priority to any one concept covered by the provisional.A non-provisional utility patent may also claim priority to several provisional applications. So, for example, if you come up with NEW ideas that aren’t covered by a previously filed provisional, and it’s still too early to submit the non-provisional (i.e., your product isn’t in its final state), you should file a second provisional application. Then, a non-provisional utility patent can claim patent priority back to numerous provisional applications if filed within 12 months of the first provisional application. As a result, you will receive the earliest feasible priority date for each of your ideas.

About the Author

You may also like these