It is well known that non-provisional patent applications that are filed within 12 months of a provisional application can claim the benefit of the date of the earlier filed provisional application, yet without adversely affecting the patent term of the non-provisional application.
Sometimes, however, Applicant adds new matter into the later filed non-provisional application (i.e., matter that did not appear in the provisional application). Technically speaking, the United States Patent and Trademark Office is supposed to step through the non-provisional application claim by claim and decide the appropriate effective date for each respective claim. Some of the claims may be fully supported by the provisional application, and thus get the benefit of the provisional application's early filing date. Other claims, relying at least in part on the newly added matter, are only entitled to the non-provisional's later filing date.
Aside from the applicant being able to add new matter to a subsequently filed non-provisional application, the applicant may also choose not to pursue various embodiments originally described in the provisional application. At the end of the day, the scope of a non-provisional application may be extremely different than the scope of the provisional application.
It is for this reason that one cannot safely rely on the contents of a provisional application in order to support a particular claim construction of a claim that appears in later-filed non-provisional application. The court may conclude that the applicant made a purposeful choice in not pursuing certain embodiments described in the provisional application.
In fact, Theresa Rakocy at Faye Sharpe recently described a case where this technique didn't work:
http://www.faysharpe.com/2017/02/23/converting-a-patent-application-from-a-provisional-take-care-to-convert-everything/
Sometimes, however, Applicant adds new matter into the later filed non-provisional application (i.e., matter that did not appear in the provisional application). Technically speaking, the United States Patent and Trademark Office is supposed to step through the non-provisional application claim by claim and decide the appropriate effective date for each respective claim. Some of the claims may be fully supported by the provisional application, and thus get the benefit of the provisional application's early filing date. Other claims, relying at least in part on the newly added matter, are only entitled to the non-provisional's later filing date.
Aside from the applicant being able to add new matter to a subsequently filed non-provisional application, the applicant may also choose not to pursue various embodiments originally described in the provisional application. At the end of the day, the scope of a non-provisional application may be extremely different than the scope of the provisional application.
It is for this reason that one cannot safely rely on the contents of a provisional application in order to support a particular claim construction of a claim that appears in later-filed non-provisional application. The court may conclude that the applicant made a purposeful choice in not pursuing certain embodiments described in the provisional application.
In fact, Theresa Rakocy at Faye Sharpe recently described a case where this technique didn't work:
http://www.faysharpe.com/2017/02/23/converting-a-patent-application-from-a-provisional-take-care-to-convert-everything/
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