Jim, I'm wondering whether you are correct here. I understand that the US provisional filed without paying a fee is recognised as abandoned, but at which moment does this legal effect take place, ex tunc from the date of filing or ex nunc at the moment that payment would still be possible? Further, the Paris Convention requires that the first application is abandoned before filing a further application without leaving any trace. In this case the provisional is used to obtain a foreign filing license, which implies that there is a trace left.
First, if you really do intend to file in the US eventually, it's probably best to go ahead and pay the fees for the provisional. I suppose I was mixing two hypotheticals.
If you want to file abroad first and the invention was made in the US and you want to eventually come back to the US, file the provisional (can't believe I'm saying that), pay the fees, and immediately file abroad under the Paris Convention.
If you want to file abroad first and the invention was made in the US and you
don't want to eventually come back to the US, file the provisional in the US without fees, get the foreign filing license, and file abroad.
Re no trace: first, the filing abroad won't be under the Paris Convention, so it doesn't apply there. However, you might want to use the Paris Convention for other jurisdictions abroad. Forgive me for not looking it up, but I don't believe the Paris Contention requires that there be no trace of any earlier application for the same invention but rather just that no residual possibility of patent rights are left -- no chance to revive.
One way to ensure no residual right remain is to explicitly abandon the application. I don't know if you can file something like that in a provisional application, but just doing so -- even if not accepted by the USPTO -- should be considered relevant in application of the Paris Convention elsewhere.
Another way could be to wait beyond 12 months from the PPA filing date to file elsewhere under the Paris Convention. Since the PPA was filed first, to get the foreign filing license, the 12-month period for claiming priority of the PPA would expire before the 12-month period for claiming priority of the next-filed application under the Paris Convention.
FWIW, this is a bit convoluted for my tastes. It seems that the only time a client would want a patent filed elsewhere on an invention made here would be a large, international client with a research facility here and a base elsewhere. Even then, it would seem odd to have a research facility in the US but not want patent protection in the US. But, if that's the situation, the international corporate client should be willing to pony up the $200 for the proper foreign filing license rather than playing games to save 200 quid.
The poster of the original question leading to this topic mistakenly believed patent protection would be available abroad for the subject matter of a US patent filed by someone else. Accordingly, I think this topic is mostly academic and not likely to come up in practice.
Regards.
Author
Topic: Provisional application to get a foreign filing license (Read 662 times)
