Thursday, August 8, 2013

Wants to File Multiple Inventions in a Single Provisional Patent Application

Dear Rich: After reading Nolo patent books I have arrived at the following conclusions: I can submit multiple independent inventions (each meeting Sec. 112 requirements) in a single PPA (using any title) with only one PPA filing fee. And later, while filing the RPA, I can ask the examiner to refer to/locate that particular invention (buried along with other inventions) in the PPA. Please confirm if I got it right! Not exactly. First, are you sure you've been reading the most current versions of the Nolo patent books. Patent law has changed quite a bit in the past five years and earlier editions of our books are seriously outdated. Second, if you are concerned about protecting the rights to multiple inventions and you wish to "compress" them into one provisional patent application, you should consider speaking with a patent professional --  an attorney or an agent who can best advise you how to preserve your multiple rights. Finally, your question is based on the premise that a patent examiner will be looking at your provisional patent application (PPA).  Examiners typically will not review PPAs unless the inventor needs to rely on the filing date to prove that the application was filed prior to a cited reference or another patent or application -- a not-so-common occurrence. According to patent expert, David Pressman, only then would an applicant refer to the PPA and its filing date. If the PPA included several inventions and the applicant needed an earlier date for a particular invention claimed in a connected regular patent application, the applicant could then tell the examiner where the PPA disclosed that information.