Writing claims into a provisional patent application

I have read conflicting ideas on this. The common argument in favor of yes is that the more closely your final patent application the more likely you have patent protection back to the non-prov application date. Interestingly the same argument is used by those that advocate not putting claims into a provisional because you may run into problems when filing your non-prov application if the claims are slightly different.

So which side makes more sense in the real-world of patent applications?

Remember that the specification must still describe the invention and the “real” patent application cannot include anything that was not within the scope of the original.

Given that, however, patent lawyers will always try to disclose as little as they can get away with. In at least one case, I am told, the provisional application offered a drawing instead of claims.

So, I write and prosecute patents for a patent attorney. Recently we had a couple of provisional patents come through where the inventor basically wrote the patent (with advice from us). The attorney asked me to write a few claims for each provisional to make sure that the invention was properly disclosed in the provisional application. It’s sort of a check to make sure that what you want to claim is actually disclosed in the application. In both cases, writing the claims brought to light areas that needed more disclosure so we told the inventor to beef up those areas.

I recently did a non-provisional based on a provisional (I did not write the provisional claims) and the claims for the non-provisional ended up being completely different from the provisional claims.

New Railhead Mfg. Co. v. Vermeer Mfg. Co. & Earth Tool Co. is a well-known case regarding non-provisional claims vs. the original provisional application, although I don’t remember if it’s relevant to your question.

IANAL, of course, I am just telling you what my boss the attorney tells me to do. :slight_smile:

You won’t run into problems filing a nonprovisional with claims that are slightly different or even wildly different as long as those claims have proper written description and are enabled by the specification of the provisional. My view is to write claims as best as you can for the provisional to ensure that they have proper disclosure and having written them, you might as well file them with your provisional.

Nothing stops you from doing so and a picture can be worth a thousand words. I can’t imagine that provisional application being anything but worthless though.