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[Cocolroo]

Just wanted to get advice on what you would think a potential licensee would view as more valuable when presenting them with my product.  (assuming they are strongly interested)
I have a provisional patent with claims and drawings done by a legal patent attorney (with patent search results and a freedom to operate letter)
The application is ready to go as a NP utility app but can be filed now as a NP or Prov.within a year. So either a Prov with potential for Accelerated exam or NP but completed.
To me the obvious answer is to bring a NP patent pending status to the table but from what I understand once that is filed you cant go for an accelerated exam.
With this product being easy to make I think an accelerated exam would be the way to go but I dont have the extra $3000 right now, but filing a NP  would give me a 6 mths to a year to get the money,file an AE NP and strengthen my position against potential infringers and the time I or the company has have to go after them.
I understand I cant do so( or at least forfeit my rights to collect any money) until patent is issued.Of course I am assuming two things for argument sake that I dont know.
1.Manufacturers will be interested in my product 2.There can be copycat products produced easily.
Thanks....

[khazzah]

I have a provisional patent with claims and drawings done by a legal patent attorney (with patent search results and a freedom to operate letter).  The application is ready to go as a NP utility app but can be filed now as a NP or Prov.within a year.

So an attorney drafted an application and you filed it as a provisional? And since it was prepared with claims and drawings, it's "ready to go as a utility", meaning you can re-file the same provisional as a utility?

So either a Prov with potential for Accelerated exam or NP but completed. To me the obvious answer is to bring a NP patent pending status to the table but from what I understand once that is filed you cant go for an accelerated exam.

You're right that the app must be filed as accelerated exam from day one.

So your application that was filed as a provisional and is "ready to go as a utility" is not ready for accelerated exam because you haven't done an appropriate search that qualifies for accel exam?

[Cocolroo]

It hasnt been filed at all.Its been prepared with claims and drawing almost as a utility,and paid for as a utility but he says to he can file now as Prov which would buy me time between now and a year to file as a NP  AE status or just complete and file now as a NP and forfeit rights for AE.
Either way its paid as a utility whther I file it now or later but what is the extra cost is the AE.
I guess the purpose of filing now with the Prov would at least establish some prior art until I
can come up with difference in price.Or it could just be wasting more time.
From what I understand,which could be wrong but im not an attorney,is that an AE can expedite
everything  possibly as soon as one year in getting a patent,assuming there is nothing else
out there.
Thanks for the response..

[khazzah]

It hasnt been filed at all.Its been prepared with claims and drawing almost as a utility,and paid for as a utility but he says to he can file now as Prov which would buy me time between now and a year to file as a NP AE status or just complete and file now as a NP and forfeit rights for AE. Either way its paid as a utility whther I file it now or later but what is the extra cost is the AE.

Gotcha.

From what I understand... is that an AE can expedite everything possibly as soon as one year in getting a patent,assuming there is nothing else out there.

"Can" and "possibly" being the operative words. From the PTO's own FAQ for Accelerated Exam:

This twelve-month timeframe is simply a goal. Any failure to meet the twelve-month goal or other issues relating to this twelve-month goal are neither petitionable nor appealable matters.

I guess the purpose of filing now with the Prov would at least establish some prior art until I can come up with difference in price.

Filing the provisional doesn't "establish prior art", but it does establish a "priority date", which is generally a good thing.

Or it could just be wasting more time.

Maybe. There are no easy answers to this. Nobody knows how long the patent process would take if you filed *without* an Accel Exam, or how long it would take if you filed *with* an Accel Exam, or how long it would take if you filed a Prov then waited a year for Accel Exam.

There are just too many variables.

Just wanted to get advice on what you would think a potential licensee would view as more valuable when presenting them with my product. 

And that's an entirely separate question: not simply how long will Accel Exam take, but how much a potential licensee would *value* Accel Exam. I have no idea.

[Isaac]

I understand once that is filed you cant go for an accelerated exam.
With this product being easy to make I think an accelerated exam would be the way to go but I dont have the extra $3000 right now, but filing a NP  would give me a 6 mths to a year to get the money,file an AE NP and strengthen my position against potential infringers and the time I or the company has have to go after them.

If there is a strong preference for paying money later over paying money now, you can file a non-provisional now and then file a continuation/AE later.  But who knows if that would save any time at all.   An even funkier strategy would be to file a bunch of claims and to file a divisional/AE in response to a restriction requirement. 

[bleedingpen]

It is much easier, about the same cost, and just slightly longer in time to go the PPH route as opposed to an AE petition.  Plus you avoid all the prosecution history of AE petitions. 

[khazzah]

It is much easier, about the same cost, and just slightly longer in time to go the PPH route as opposed to an AE petition.  Plus you avoid all the prosecution history of AE petitions. 

For those not familiar with PTO jargon, PPH is Patent Prosecution Highway. The PTO website has info.

When you say "about the same cost", are you comparing two apps (one US and one foreign) vs. a single US-only AE app? And do you take into account prosecution costs as well, or just the initial costs of draft-[search]-and-file?

[Cocolroo]

It is much easier, about the same cost, and just slightly longer in time to go the PPH route as opposed to an AE petition.  Plus you avoid all the prosecution history of AE petitions. 

Okay I looked up PPH which means  Patent Prosecution Highway I gather.
I got lost after that.
If not to much trouble could you explain this in laymans term in this situation.
Can you pursue the PPH once NP application is filed.
Thanks Again.

[Isaac]

Okay I looked up PPH which means  Patent Prosecution Highway I gather.
I got lost after that.

You file applications in two participating countries and designate one of the two as the lead office.  When the lead office allows claims, you submit the office action and search information to the second office and presumably get expedited treatment in the second country.

It is not clear to me that your situations fits this approach.

[khazzah]

...  presumably get expedited treatment in the second country.

It is not clear to me that your situations fits this approach.

Looks PPH is useful mostly for inventors that already know they want protection in multiple countries. I agree that nothing Cocolroo has said suggests this applies to him.

bleedingpen, what's your thinking here?

It is much easier, about the same cost, and just slightly longer in time to go the PPH route as opposed to an AE petition.  Plus you avoid all the prosecution history of AE petitions. 

If not to much trouble could you explain this in laymans term in this situation.

"Prosecution history" is a bad thing -- it affects how your patent will be interpreted if you try to assert it (i.e. sue someone or negotiate a license). The rules for Accel Exam result in extensive prosecution history (the bad thing). You don't get as much of this bad thing if you do Patent Pros. Highway instead.

[bleedingpen]

...  presumably get expedited treatment in the second country.

It is not clear to me that your situations fits this approach.

Looks PPH is useful mostly for inventors that already know they want protection in multiple countries. I agree that nothing Cocolroo has said suggests this applies to him.

bleedingpen, what's your thinking here?

It is still about the same cost to file PPH as it is an AE petition, and the PPH doesn't have all the statements on the record, i.e. prosecution history.

Options: 

*** File PCT designating Korea as the search authority (~$4000).  In 6 months, receive search report.  File petition doc for PPH (~$500).  Receive office action shortly thereafter.

Or

*** File normal app with AE support doc (AE petition should cost ~$5000-8000) and put a lot of statements on the record in the process.  AE applications also tend to have more narrow claims IMO. 



This is a very simple decision to me. 

[Isaac]

*** File PCT designating Korea as the search authority (~$4000).  In 6 months, receive search report.  File petition doc for PPH (~$500).  Receive office action shortly thereafter.

Are these all of the fees?

If you aren't Korean, don't you need to include costs such as translation?  Don't you also have to enter the national phase and get an allowance before you get your US application hastened up.  You also have to prosecute your application in Korea and include those fees. 

Maybe I'm off base.  I'll admit to not being up on the PCT/PPH approach.

But this does look like something to consider.   Besides the AE support document, there are some other unappealing limitations of AE.

[bleedingpen]

*** File PCT designating Korea as the search authority (~$4000).  In 6 months, receive search report.  File petition doc for PPH (~$500).  Receive office action shortly thereafter.

Are these all of the fees?

If you aren't Korean, don't you need to include costs such as translation?  Don't you also have to enter the national phase and get an allowance before you get your US application hastened up.  You also have to prosecute your application in Korea and include those fees. 

Maybe I'm off base.  I'll admit to not being up on the PCT/PPH approach.

But this does look like something to consider.   Besides the AE support document, there are some other unappealing limitations of AE.

Isaac,

I will start with the disclaimer that this is all very new practice, so verify everything that I say.

It is my understanding that you can file a PCT app, designate Korea as the searching authority, receive an ISR and written opinion from KIPO (around 4-6 months), and then use the ISR and written opinion to enter the PPH in the US.

The cost of the PCT app, including attorney and filing fees, is somewhere around $4,000.  There are no translation fees associated with the KIPO ISR and written opinion. 

There is a ton of information about these programs available online.  Note that the inclusion of the use of ISRs from KIPO as the vehicle for PPH is a relatively new program, so you may find conflicting information. 

[walmartz]

Hi every one and welcome to all . please introduce your self.

[Isaac]

The cost of the PCT app, including attorney and filing fees, is somewhere around $4,000.  There are no translation fees associated with the KIPO ISR and written opinion.

Korea will conduct the examination in English?  Wow!