Can I Break a Provisional Patent into Multiple Filings?

Patent FAQs

CAN I USE A SINGLE PROVISIONAL PATENT INTO MULTIPLE NON-PROVISIONAL PATENT FILINGS?

One provisional patent application may serve as the basis to as many non-provisional patents as you would like. As long as you file at least one non-provisional within 12 months of the provisional application, you can continue to file additional non-provisional applications claiming priority back to the same provisional (exception: if you add ‘new subject matter’ that was not covered/anticipated by the provisional, you will need to make a Continuation-in-Part Priority Claim).

This means that you can split the provisional into two or more non-provisional utility patent filings claiming priority back to that same provisional application, so long as you don’t add new material to any application. If you have additional subject matter you would like to include, the additional subject matter should be filed in a separate filing known as a Continuation-in-Part (CIP). For CIPs, the new subject matter gets a patent priority date of the CIP’s filing date, while the originally presented subject matter keeps its original patent priority date.

Note: there is a risk to filing provisional applications with multiple inventions in the same filing. Generally, you don’t want a single provisional filing to include multiple concepts.  Why? Answer: If you choose not to pursue a non-provisional patent application on any one of those concepts in the signal provisional (e.g., you decide to save it for later, or decide to keep it a trade secret), you’ll be out of luck – as all of the subject matter in the provisional may still enter the public domain when you claim priority to any one concept covered by the provisional.

Also, a non-provisional utility patent can claim patent priority back to multiple provisional applications. So, for example, if you come up with NEW ideas that aren’t covered by a first filed provisional, and it’s still too soon to file the non-provisional (i.e., your product isn’t at its final stage), it would be advisable to file a second provisional application. Then, a non-provisional utility patent can claim patent priority back to multiple provisional applications, so long as it is filed within 12-months of the first filed provisional. In this way, you get the earliest possible priority date for each of your inventions.

Consider this article for further reading, and contact an attorney if interested in more detail related to your situation

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