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Provisionals Do Not Require Claims

Postby Scrupulous » Fri Aug 20, 2010 2:08 pm

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US provisional patent applications are not required to contain any claims at all. This fact is supported by the USPTO policies, as well as the PCT through the Paris Convention.

Many US patent practitioners are under the mistaken impression that one or more claims are required in a provisional application, if it to be used as the basis of priority for an international application or a foreign filing. I cannot comment on why they would say that. But, suffice it to say it is not the case.

The reason why it is important to be clear on this is because having a claim in a provisional can actually hurt the application, in my opinion. A claim can inadvertently limit the scope of the intellectual property sought, by indicating that other uses were specifically omitted. This can happen at a time when the invention isn't even well-understood by the inventor himself, when the provisional is filed.

This is maybe not a big deal if nothing pre-dates your follow-up application. But, it can come back to bite you if a broader scope was relied upon to back a public use.

For more perspective on this, goto this thread...