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[Jp]

I am considering disclosing a proposed patentable technology to foreign investors.

I will have a Provisional Patent, I am here to get some advice on what precaution I may need to know about.

[JimIvey]

Well, there's no such thing as a provisional patent.  At most, you have a provisional application.  It only preserves your patent rights to the extent it meets the same legal requirements of a real patent application. 

Assuming your application does meet those legal requirements and that your application was filed less than a year ago, you can safely disclose your invention to anyone without endangering your patent rights in most of the industrialized world.  However, to further pursue those rights, you'll need more applications.

You can ask that the investors sign non-disclosure agreements (NDAs).  Whether they do or not, you will likely have to eventually rely on your patent rights that you might later acquire.  So, make sure your provisional application is up to the job.

Regards.

[klaviernista]

There are strict (as in strict liablity) laws in place against exporting technology from the U.S. without a license.  So, before you disclose anything to a foreign investor, you might want to consult an attorney specializing in that area of the law.

One route you could take to avoid any issue would be to file a non-provisional application and wait until the PTO grants you a foreign filing license (often it is in the filing receipt, but not always).  Once you have the filing receipt, it is my understanding that any technology in the patent application is can be disclosed abroad (though don't take my word on this, as I do not specialize in import/export law).

[JimIvey]

That's a good point that I overlooked.

One question: doesn't a provisional application also generate a foreign filing license?  I don't file many provisional applications, so I don't know off the top of my head.  However, the raison d'etre of provisional applications is to provide priority for other applications, so I would expect that a provisional application would, in effect, be an application for a foreign filing license.

And, I'm also not an import/export expert by any stretch of the imagination, but to what degree does a foreign filing license clear foreign export of technical information contained in the application so licensed?  If the license permits one to file abroad, presumably resulting in a published patent application in 6-18 months, I would think the US government has authorized export of that information.

In short, it would seem that, if the provisional application has already been granted a foreign filing license, export of the information disclosed in the provisional application might be safe.  Any thoughts?

Regards.

[MYK]

That's a good point that I overlooked.

One question: doesn't a provisional application also generate a foreign filing license?  I don't file many provisional applications, so I don't know off the top of my head.  However, the raison d'etre of provisional applications is to provide priority for other applications, so I would expect that a provisional application would, in effect, be an application for a foreign filing license.

My favorite cereal.  I live for that stuff.  Anyway.

Close enough for government work:
http://www.uspto.gov/web/offices/pac/mpep/documents/0100_115.htm

All provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), and international applications filed under the PCT, in the U.S. Patent and Trademark Office (USPTO) are reviewed for the purposes of issuance of a foreign filing license pursuant to 35 U.S.C. 184. See also 37 CFR 5.1(b).