While vacationing in Mexico on April 14, 2001, Henrietta invented a camera that
operated at high temperature and is waterproof. She carefully documented her invention
and filed a provisional application in the USPTO on April 30, 2001. She conducted tests
in which the camera withstood temperatures of up to 350 degrees Fahrenheit. However,
when the camera was placed in the water leaks were discovered rendering the camera
inoperable. On April 12, 2002, Henrietta conceived of means that she rightfully believed
will fix the leakage issue. Henrietta came to you and asked whether she can file another
application. Henrietta desires to obtain the broadest patent protection available to her.
Which of the following is the best manner in accordance with proper USPTO practice
and procedure for obtaining the patent covering both aspects of her invention?
(A) She can file a nonprovisional application on April 30, 2002 claiming
benefit of the filing date of the provisional application, disclosing the
means for fixing the leak and presenting a claim covering a camera that
operates at high temperatures and a claim covering a camera that is
waterproof, or presenting a claim covering a camera that both operates at
high temperatures and is waterproof.
(B) Henrietta cannot rightfully claim a camera that is waterproof in a
nonprovisional application filed on April 30, 2002, since she tested the
camera and the camera developed leaks.
(C) Henrietta can file another provisional application on April 30, 2002 and
obtain benefit of the filing of the provisional application filed on April 30,
(D) Henrietta may establish a date of April 14, 2001 for a reduction to practice
of her invention for claims directed to the waterproofing feature.
(E) Henrietta should file a nonprovisional application on April 30, 2002
having claims directed only to a camera that withstands high temperatures
since the camera that she tested developed leaks.
A provisional holds your place in line for whatever it includes in its disclosure. If
you add more stuff when the non-provisional is filed you can still obtain benefit
for whatever the two applications shared. A is the answer.
ANSWER: (A). As to (B) and (E), an actual reduction to practice is not a necessary
requirement for filing an application so long as the specification enables one of ordinary skill in
the art to make and use the invention. However, (D) is incorrect, as a reduction to practice may
not be established since the camera leaked. As to (C), a second provisional is not entitled to the
benefit of the filing date of the first provisional application. 35 U.S.C. § 111(h)(7).