Henrietta’s Camera

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, 2001.

(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).