US provisional reference. In writing a US regular patent application,
I want to refer to a filed provisional, but do not need to claim the
provisional's priority date. Can I do this by referring to the
provisional in the Detailed Description only, or do I have to claim
the benefit of the provisional in the Cross-reference to Related
Applications?

Hello, and thanks for your question regarding the application process
in obtaining a US Patent.

The process in citing a provisional reference seems to depend on what
type of patent you are applying for: Design, Utility or Plant.

In the case of a Utility patent, The United States Patent and
Trademark Office (USPTO), requires the provisional reference to be
documented in the cross reference section, detailing the application
number, date and relationship to the previous filing.

I quote from the following link at the USPTO:

http://www.uspto.gov/web/offices/pac/utility/utility.htm#cross


"Cross-Reference to Related Applications 

       Any nonprovisional utility patent application claiming the
benefit of one or more prior filed copending nonprovisional
applications (or international applications designating the United
States of America) under 35 USC §§ 120, 121 or 365(c) must contain in
the first sentence of the specification following the title, a
reference to each such prior application, identifying it by the
application number or international application number and
international filing date, and
indicating the relationship of the applications, or include the
reference to the earlier application in an application data sheet.
(See 37 CFR § 1.76.)
       Cross-references to other related patent applications may be
made when appropriate."


In the case of the design patent application, a fundamentally
different application is used. If you reference a previous
application, you may used the art or photographs in the detailed
"Drawing section"

This application has a less formal approach, but you can find the
guidelines here:

http://www.uspto.gov/web/offices/pac/design/index.html#app


In the case of a plant patent application, if you need to cross
reference a prior application you need to include  "A utility
application from which the claimed plant is the subject of a
divisional application."

See the following link for more information:

http://www.uspto.gov/web/offices/pac/plant/index.html#8


I hope this helps, please contact me if you need further
clarification.


Colin-ga

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Request for Answer Clarification by philipa-ga on 20 May 2002 21:27 PDT

I am interested in a Utility patent. But I don't want to claim the
*benefit* of the provisional, since I think this means that at least
one of the inventors of the provisional must be one of the inventors
of the Utility application (my reading of MPEP, Manual of Patent
Examining Practice). I have since found out from a colleague that it
is sufficient to cite the provisional in the Detailed Description.
Even so, thanks for your answer.

---

Clarification of Answer by colin-ga on 21 May 2002 05:05 PDT

I have delved deeper in to the Patent laws and guidelines, and concur
with your colleague.

Since you do need to reference the preceding application, but do not
need the earlier filing date,
it will be sufficient to reference it in the detailed description. It
seems that by claiming the earlier filing date from the provisional
the USPTO assumes at least one common inventor.
A quote from the MPEP:

"Under certain circumstances an application for patent is entitled to
the benefit of the filing date of a prior nonprovisional application
or  provisional application which has at least one common inventor."

See this section in the MPEP.

http://www.uspto.gov/web/offices/pac/mpep/documents/200.htm#sect201.11


I hope this helps, and thank you for using Google Answers.

Colin