Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[cordovan66]

I filed a US provisional patent application 11 months ago.

I expected to know the patent's potential value by now, but unfortunately I don't.  The patent concerns improvements of camera sensors. The US, Japan and Europe account for roughly 30% each of the global market for my invention.

What's the cheapest way of preserving the option to file in Japan and Europe with my Provisional application's priority date while I ascertain the market interest in my invention? Should I file with Wipo, under the PCT?  Will that get me an additional 18 months? How much will I have to pay? Do I just have to pay the "Transmittal and Filing fee" ($240+$1147) right now or also the "Search Fees" and "Preliminary Examination fees"?  I'm looking at the WIPO fees at http://www.wipo.int/pct/en/fees.pdf . What does "character coded format" mean? There's a discount for using it in the application.

If I file at WIPO, I don't also need to file a non-provisional US application now, do I? I'll get an additional 18 months before it reaches the national phase, right? If, at that time I decide to proceed only in the US, how much more will I need to pay. What if I decide to include Japan as well.

Thanks!

[JimIvey]

What's the cheapest way of preserving the option to file in Japan and Europe with my Provisional application's priority date while I ascertain the market interest in my invention? Should I file with Wipo, under the PCT? 

That's the cheapest way to protect US, Europe, and Japan at this point.

However, unless your provisional was written properly (few seem to be), your odds of eventually getting protection in Europe could be very slim.  You would probably have reduced odds for getting protection in Japan, too.

If I file at WIPO, I don't also need to file a non-provisional US application now, do I?

No, you don't.

Regards.

[cordovan66]

Thanks.

It turns out most camera manufacturers are based in Japan. If I decide to file only in the US and Japan, should I still be filing with the WIPO or can I just file separate national patent applications?  Would Japan then honor the priority date of my US Provisional application? If so, would this lead to any immediate cost savings? I'd like to postpone incurring as much cost as possible till I ascertain the patent's worth.

Thanks again.

[bartmans]

Filing a PCT application with WIPO does not take away the costs of local national filings, it just shifts them for another 18 months, at the expense of the filing and search fees of the PCT.
Thus, the cheapest way (if you know the countries where to file) is file nationally at the end of the priority year, but this will move costs forward. Next to this financial drawback, there is also the drawback that by filing a US provisional as your priority application you have not gotten any feedback from the patenting authorities on the novelty and inventive step of your invention. By filing PCT you will get a (novelty) search and a written opinion, which can help you make the decision to continue with the patenting process or not.

Thus, the decision to postpone national filings by going through the PCT route is both a financial decision, but also a decision if you want to take the risk for spending money which in the end would appear to be a waste (if it turns out that your invention is not novel or inventive).

By the way: Japan does recognize the priority claim to a US provisional.

[JimIvey]

By the way: Japan does recognize the priority claim to a US provisional.

The tougher question is whether the provisional application is written sufficiently well to avail the applicant of its filing date.  Officially, it's supposed to meet the requirements of US law for sufficiency of disclosure to provide a priority date (effective filing date) in any jurisdiction.  However, different jurisdictions check that with varying degrees of scrutiny.

Europe is very strict, perhaps even more strict that the US is about provisional applications.  I don't know about Japan.

By the way, US law treats provisional applications and non-provisional applications exactly the same -- and many provisional applications are inadequate because few realize that fact.  Whether that's a problem for a specific provisional application and/or for Japan in particular is something I can't answer.

Regards.

[cordovan66]

Thanks for the responses.

I'm considering getting protection just in Japan and the US.
I'm trying to determine which of the two options allows me to postpone costs to later: Filing national applications in Japan and US separately or filing with the Wipo, under the PCT.

I've been studying the Japanese fee schedule and it's not clear to me how much has to be paid right away and how much can be paid later.  The application fee is modest: 24,000 Yen. The request for examination is higher at 168,000 Yen +4,000 Yen per claim. Does this 'Request for examination' fee need to be paid at the time of application or later?
At the time of application, only the section headings need be translated to Japanese. However by the 14th month from the priority date (3 months from now), the whole application will need to be translated to Japanese. How much does it costs to translate a 20 page application?

If I file under with the Wipo under the PCT, I'd need to pay $3381 right away and get an 18 month extension before having to pay any more or do any translations, right?

Thanks again

[cordovan66]

By the way: Japan does recognize the priority claim to a US provisional.

The tougher question is whether the provisional application is written sufficiently well to avail the applicant of its filing date.  Officially, it's supposed to meet the requirements of US law for sufficiency of disclosure to provide a priority date (effective filing date) in any jurisdiction.  However, different jurisdictions check that with varying degrees of scrutiny.

Europe is very strict, perhaps even more strict that the US is about provisional applications.  I don't know about Japan.

By the way, US law treats provisional applications and non-provisional applications exactly the same -- and many provisional applications are inadequate because few realize that fact.  Whether that's a problem for a specific provisional application and/or for Japan in particular is something I can't answer.

Regards.

Thanks for your concern regarding the quality of the provisional.
I did finally see a patent lawyer - a well regarded one. He said  my provisional was the best written provisional he had ever seen. After a couple of weeks and several hours of phone calls, he has found no flaw in it. I wrote the provisional after just 2-3 days of reading the book "patent it yourself". The non-provisionl application is going to get filed next week with little more than cosmetic changes. I guess the ~$10k in attorney fees  just bought me peace of mind.

[JimIvey]

I guess the ~$10k in attorney fees just bought me peace of mind.

Congrats on getting your application moving along.  While I can't speak to the specifics of your situation, I think $10k for mostly cosmetic changes to an application is much higher than is typical.  I hardly ever charge that much for writing an application from scratch.

I'm not at all criticizing you or your attorney.  I just don't want people to think that $10k is typical for mostly cosmetic changes to an application.  Patent applications are typically not that expensive.

Regards.

[patentsusa]

I just don't want people to think that $10k is typical for mostly cosmetic changes to an application.  Patent applications are typically not that expensive.

Reviewing an application written by someone else often takes more time than drafting a new application from scratch.  Every time you see something that is different from what you would have written, you have to stop and consider whether or not to change it and whether changing it will require multiple other changes in the application.  It sounds like there were multiple phone call involved too.