Legal Question in Intellectual Property in Minnesota

Change to provisional application

I recently applied for a provisional patent application. I did an extensive patent search prior to filing the PPA. However, after I filed, I came across prior art that required that I change the wording of my independant claims to make the invention patentable (i.e. add the term ''unitary structure''). So, do I file a new PPA with the desired wording, and reference the original PPA, or can I amend the original, or? I assume that whatever I do, I will still need to file for a utility patent within year of the original PPA filing, correct?


Asked on 12/27/05, 4:50 pm

1 Answer from Attorneys
Patrick Tracy Patrick J. Tracy, Esq, P.E.,

Re: Change to provisional application

You do not need to file a new provisional application to maintain your priority date. You need to do a critical analysis before you do a final utility application, since other prior art may appear in the next 12 months. If you can afford to talk to a patent agent in contrast to an attorney you may be able to afford his services and would make this process a lot simpler. You just need to claim priority based on the provisional application rather than incorporating the application by reference.

Good Luck!!

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Answered on 12/27/05, 5:35 pm


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