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[Tim-ti]

Hi IP gurus,

I have a US provisional application that I filed (myself) with the USPTO in August 2010, I understand that I will need to make a 'full' US application before this is a year old. The application relates to a product that I'm bringing to market myself in the USA - it has not yet been made public, I plan to disclose it for sale in August 2011.

I've determined that I might also benefit from a little international protection, the second biggest market for my product is the UK - so I'd like to pursue a UK application, I understand that I can claim the 2010 propriety date, but I'm a little confused about the timing that is required to make the UK patent stick. Do I need to file in the UK before the full USA application acts as a public disclosure? Do I need to file in the UK before any sales act as public disclosure? Can you recommend the 'proper' timing for this?

Thank you in advance for any helpful advice.
Cheers,
Tim

[bleedingpen]

Hi IP gurus,

I have a US provisional application that I filed (myself) with the USPTO in August 2010, I understand that I will need to make a 'full' US application before this is a year old. The application relates to a product that I'm bringing to market myself in the USA - it has not yet been made public, I plan to disclose it for sale in August 2011.

I've determined that I might also benefit from a little international protection, the second biggest market for my product is the UK - so I'd like to pursue a UK application, I understand that I can claim the 2010 propriety date, but I'm a little confused about the timing that is required to make the UK patent stick. Do I need to file in the UK before the full USA application acts as a public disclosure? Do I need to file in the UK before any sales act as public disclosure? Can you recommend the 'proper' timing for this?

Thank you in advance for any helpful advice.
Cheers,
Tim

You can either file an application in the EPO or just the UK in August, 2011, or you can file a PCT app in August, 2011 and then 18 months later (technically 19) file in the EPO or the UK. 

BTW- a pro se applicant has absolutely no chance of getting a patent in the EPO.  If you want international protection, you best get an attorney involved quickly. 

[Tim-ti]

Thanks Bleedingpen, I think you're inferring that my international priority date will be August 2010 no matter what - that I can complete a US full application or make sales before I file in the UK (or EPO)? Please can you confirm that I'm assuming correctly?

Do you feel there's any advantage to using a UK or US based attorney for the international filing?

Thanks again, Tim

[bleedingpen]

Thanks Bleedingpen, I think you're inferring that my international priority date will be August 2010 no matter what - that I can complete a US full application or make sales before I file in the UK (or EPO)? Please can you confirm that I'm assuming correctly?

Do you feel there's any advantage to using a UK or US based attorney for the international filing?

Thanks again, Tim

If you do not have a foreign filing on file by August 2011 (either foreign country specific or PCT filing) and you disclose or make sales of the product, then you will not be entitled to any foreign rights.  In order to perfect priority to your provisional application and also preserve foreign rights, you really should have a PCT application filed.

As to using a UK or US based attorney- if you are just PCT filing at this point, a US attorney can do that for you. 

If you have more questions, feel free to post them here or you can PM me and I will send you my personal contact info and we can talk on the phone if you like.

[rts]

I'll just chime in here to say that the EPO fees are very high. If your European market is indeed mainly UK, then you might want to have a look at the UK patent office fees and compare.

[bartmans]

indeed, rts is correct. If your only (foreign) interest is the UK, then it will be much cheaper and easier to file a UK application directly, claiming priority from your US provisional application (which means that it should be filed on or before the anniversary of your provisional).
Also first filing PCT and then UK national would only increase costs and delay prosecution of the application. On the other hand, if you are not only interested in the UK, but may be also would like to leave your options open for other markets (Australia, Canada, India, China?) a PCT filing is indicated, since this will buy you time (another 18 months) before you have to take a decision where you want to vest your patent rights.

Regards.