[{"data":1,"prerenderedAt":-1},["ShallowReactive",2],{"detail-sidebar-cat-0-en-105":3,"doc-seo-650554-105":59,"doc-detail-650554-en":130},{"code":4,"msg":5,"data":6},0,"success",[7,13,18,23,28,33,38,43,48,51,55],{"id":8,"doc_module":4,"doc_module_name":9,"category_name":10,"show_sort_weight":11,"slug":12},1,"Document","Story & Novel",90,"story-novel",{"id":14,"doc_module":4,"doc_module_name":9,"category_name":15,"show_sort_weight":16,"slug":17},2,"Literature",80,"literature",{"id":19,"doc_module":4,"doc_module_name":9,"category_name":20,"show_sort_weight":21,"slug":22},4,"Exam",70,"exam",{"id":24,"doc_module":4,"doc_module_name":9,"category_name":25,"show_sort_weight":26,"slug":27},5,"Comic",60,"comic",{"id":29,"doc_module":4,"doc_module_name":9,"category_name":30,"show_sort_weight":31,"slug":32},6,"Technology",50,"technology",{"id":34,"doc_module":4,"doc_module_name":9,"category_name":35,"show_sort_weight":36,"slug":37},7,"Healthcare",40,"healthcare",{"id":39,"doc_module":4,"doc_module_name":9,"category_name":40,"show_sort_weight":41,"slug":42},8,"Research & Report",30,"research-report",{"id":44,"doc_module":4,"doc_module_name":9,"category_name":45,"show_sort_weight":46,"slug":47},9,"Religion & Spirituality",20,"religion-spirituality",{"id":46,"doc_module":4,"doc_module_name":9,"category_name":49,"show_sort_weight":46,"slug":50},"World Cup","world-cup",{"id":52,"doc_module":4,"doc_module_name":9,"category_name":53,"show_sort_weight":52,"slug":54},10,"Lifestyle","lifestyle",{"id":56,"doc_module":4,"doc_module_name":9,"category_name":57,"show_sort_weight":24,"slug":58},19,"General","general",{"code":4,"msg":60,"data":61},"ok",{"site_id":62,"language":63,"slug":64,"title":65,"keywords":66,"description":67,"schema_data":68,"social_meta":123,"head_meta":125,"extra_data":127,"updated_unix":129},105,"en","should-provisional-patent-applications-have-claims-discussion","Should Provisional Patent Applications Have Claims? - Discussion","","Argues that provisional patent applications should include claims, because a granted patent may be invalid if key requirements are not satisfied. Explains how 35 U.S.C. 119(e) can preserve an earlier priority date only when specific conditions such as common inventors and inventive disclosure are met, and when the regular application references the provisional. Covers why written description and enablement under 35 U.S.C. 112 require claims to define the invention, and warns that publication or sale during the priority gap can bar patentability.",{"@graph":69,"@context":122},[70,84,105],{"@type":71,"itemListElement":72},"BreadcrumbList",[73,77,79,82],{"item":74,"name":75,"@type":76,"position":8},"https://docshare.wps.com","Home","ListItem",{"item":78,"name":9,"@type":76,"position":14},"https://docshare.wps.com/document/",{"item":80,"name":40,"@type":76,"position":81},"https://docshare.wps.com/document/research-report/",3,{"item":83,"name":65,"@type":76,"position":19},"https://docshare.wps.com/document/should-provisional-patent-applications-have-claims-discussion/650554/",{"url":83,"name":65,"@type":85,"image":86,"author":91,"headline":65,"publisher":94,"fileFormat":97,"inLanguage":63,"description":67,"dateModified":98,"datePublished":99,"encodingFormat":97,"isAccessibleForFree":100,"interactionStatistic":101},"DigitalDocument",{"url":87,"@type":88,"width":89,"height":90},"https://docshare.wps.com/thumbnails/should-provisional-patent-applications-have-claims-discussion/650554.png","ImageObject",300,407,{"name":92,"@type":93},"SANS","Person",{"url":74,"name":95,"@type":96},"DocShare","Organization","application/pdf","2026-10-30","2026-10-24",true,{"@type":102,"interactionType":103,"userInteractionCount":19},"InteractionCounter",{"@type":104},"ViewAction",{"@type":106,"mainEntity":107},"FAQPage",[108,114,118],{"name":109,"@type":110,"acceptedAnswer":111},"Why does the article say provisional patent applications should include claims?","Question",{"text":112,"@type":113},"It argues that omitting claims can make the invention “undefined,” undermining the written description requirement and weakening priority support, which can affect the validity of the granted patent.","Answer",{"name":115,"@type":110,"acceptedAnswer":116},"What must be met to claim the benefit of an earlier filing date under 35 U.S.C. 119(e)?",{"text":117,"@type":113},"The article lists four requirements: at least one common inventor, some common inventive disclosure, copendency (overlap in time), and an amendment to the regular application referencing the earlier provisional.",{"name":119,"@type":110,"acceptedAnswer":120},"How do enablement and written description affect provisional applications?",{"text":121,"@type":113},"Both provisional and regular applications must comply with the enablement and written description requirements of 35 U.S.C. 112. The article explains written description as requiring possession/completion, and warns that without claims it may not satisfy the requirement that the invention as claimed is fully and clearly described.","https://schema.org",{"og:url":83,"og:type":124,"og:title":65,"og:site_name":95,"og:description":67},"article",{"robots":126,"canonical":83},"index,follow",{"doc_id":128,"site_id":62},650554,1792832806,{"code":4,"msg":5,"data":131},{"doc_id":128,"user_id":132,"nickname":92,"user_avatar":133,"doc_module":4,"category_id":39,"category_name":40,"doc_title":65,"doc_description":67,"doc_content":134,"file_id":135,"file_url":136,"file_type":137,"file_size":138,"view_count":19,"is_deleted":4,"is_public":8,"is_downloadable":8,"audit_status":8,"page_count":19,"language":139,"language_code":63,"site_id":62,"html_lang":63,"table_of_contents":140,"faqs":141,"seo_title":142,"seo_description":67,"update_tm":129,"read_time":52},962090760505,"https://ap-avatar.wpscdn.com/davatar_155a257f0dc6eb9ab79c44ca47cae57d","Should Provisional Patent Applications Have Claims?  \nBy Todd Juneau  \nThe short answer to this question is an emphatic “YES!” And, if you’re short on time and don’t want to read the rest ofthis article, but still want to know the reason why provisional applications should include claims, here it is: there’s a good chance the granted patent won’t be valid.  \nRegardless of whether the U.S. Patent Office can or will accept a provisional application as a valid filing, even without any claims, there are still other requirements, namely the written description requirement, that must be met in order for a regular patent application, filed at around the one year date, to claim priority to the provisional filing date. And, without the earlier date, any publication of the invention can be a bar to patentability. Since professionals in the industry are aware of the potential liabilities of poorly constructed patents, it doesn’t make sense to start off on the wrong foot by omitting claims from your provisional.  \nClaiming the benefit of an earlier filing date; right ofpriority  \nThere is a law, 35 U.S.C. 119(e), which governs how a regular patent application can‘pretend’ that it was actually filed at the U. S. Patent Office on the date that its related provisional application was filed. This allows applicants who file a provisional to maintain their original filing date when they resubmit the application to enter the examination process. There are only four requirements to be able to claim this earlier date: (i) there must be at least one common inventor between the two applications,(ii) there must be some common inventive disclosure in the two applications,(iii) the two applications must overlap in time, [i.e. be](i.e. be) copending, and (iv) the applicant or his or her attorney must amend the regular application to reference the earlier one. For ease of remembering these requirements, I would suggest using the mnemonic,“the four C’s”:  \nCommon inventor, Common invention, Copendency, and Contains reference to earlier filed.  \nThe requirements of a provisional application  \nProvisional patent applications are governed by another section of the Title 35 patent laws, namely 35 U.S.C. 111(b) . This is in contrast to section 111(a) which governs‘regular’ patent applications for examination.  \nSection 111(b)(1) requires that a provisional application shall include (A) a specification as prescribed by the 1st paragraph of Section 112 of the patent laws, and (B) drawing(s) as necessary. Section 111(b)(2) specifically says that a claim shall not be required in a provisional application. Thus, it is optional; maybe.  \nEnablement & Written Description  \nAll patent applications, provisional and regular, must comply with the enablement and written description requirements, namely the 1st paragraph of Section 112 of the patent laws we introduced you to above.  \nEnablement, in short, is a term used to describe when a patent specification contains“full, clear, concise, and exact” enough directions that any person skilled in the art to which it pertains can make the invention and can use the invention. I like to think ofit asa “box of parts” with the step-by-step instructions for connecting each part to the next along with a description of how to use the final product.  \nThe written description requirement of the 1st paragraph of Sec. 112 is more of a comparison of the final product to how the patent claims are worded. The patent laws, regulations, and court decisions have had a lot to say about this requirement, but the test has been one of“possession” and completion. If an applicant has actually made a working prototype and has described in words, structures, figures, diagrams, or formulashow a person of skill will know that the invention, as claimed, was put together correctly, the requirement is satisfied. In other words, written description concerns the distinguishing and identifying characteristics of the final product, or as I think of it, how do","cbCaic4Zf9i3ci1g","https://ap.wps.com/l/cbCaic4Zf9i3ci1g","pdf",141787,"English","# Should Provisional Patent Applications Have Claims?\n## Requirements to claim priority under 35 U.S.C. 119(e)\n## What a provisional must include under 35 U.S.C. 111(b)\n## Enablement and written description under 35 U.S.C. 112\n## The Patent Office position and its implications\n## Risk of publication and bars to patentability","[{\"question\":\"Why does the article say provisional patent applications should include claims?\",\"answer\":\"It argues that omitting claims can make the invention “undefined,” undermining the written description requirement and weakening priority support, which can affect the validity of the granted patent.\"},{\"question\":\"What must be met to claim the benefit of an earlier filing date under 35 U.S.C. 119(e)?\",\"answer\":\"The article lists four requirements: at least one common inventor, some common inventive disclosure, copendency (overlap in time), and an amendment to the regular application referencing the earlier provisional.\"},{\"question\":\"How do enablement and written description affect provisional applications?\",\"answer\":\"Both provisional and regular applications must comply with the enablement and written description requirements of 35 U.S.C. 112. The article explains written description as requiring possession/completion, and warns that without claims it may not satisfy the requirement that the invention as claimed is fully and clearly described.\"}]","Should Provisional Patent Applications Have Claims? - Discussion | PDF"]