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Author Topic: Provisional Application equivalent  (Read 120 times)

stellar41

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Provisional Application equivalent
« on: 12-07-17 at 10:50 am »

Hello

I have an invention/prototype that I wish to protect in both the US and Europe.  At this time I do not have sufficient funds for a Patent application so I thought start protection by submitting a Provisional application in the US which would give me 12 months to raise funds.  I am based in Germany. 

My questions are as follows -
1) Is my understanding correct that if the US patent is granted I can transfer the patent to Europe via the PCT, dated to the time of the Provisional?
2) In the period between the provisional application date and the US patent application I can disclose the invention publicly in the US, at for example a trade fair, and not invalidate the Patent application?
3) Will showing the invention at a European trade fair after the date of the US Provisional application invalidate any Patent applications in Europe?
4) Is there another way to begin protection in Europe that is similar to the US Provisional?

Thanks in advance for any advice

George
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Tobmapsatonmi

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Re: Provisional Application equivalent
« Reply #1 on: 12-07-17 at 07:11 pm »

Hello

I have an invention/prototype that I wish to protect in both the US and Europe.  At this time I do not have sufficient funds for a Patent application so I thought start protection by submitting a Provisional application in the US which would give me 12 months to raise funds.  I am based in Germany. 

My questions are as follows -
1) Is my understanding correct that if the US patent is granted I can transfer the patent to Europe via the PCT, dated to the time of the Provisional?
2) In the period between the provisional application date and the US patent application I can disclose the invention publicly in the US, at for example a trade fair, and not invalidate the Patent application?
3) Will showing the invention at a European trade fair after the date of the US Provisional application invalidate any Patent applications in Europe?
4) Is there another way to begin protection in Europe that is similar to the US Provisional?

Thanks in advance for any advice

George


Hi.  We do have a few European patent attorneys who comment from time to time, who might provide better guidance.  I'll offer you my thoughts for now and hope one of them follows along later.

When I hear "I do not have sufficient funds for a Patent application so I thought start protection by submitting a Provisional application in the US", alarm bells start ringing.

When you say you don't have the money for a patent application, but do have the money (apparently) for a US provisional application, what do you mean?  Some people may offer very scantily drafted provisional applications that are indeed very cheap - and you get what you pay for.

The alarm comes from the notion that a scantily drafted US provisional will protect you later when you try to enter EPO or DE patent office with a more carefully drafted application within that 12 month period.  It sometimes happens that the patent office says that your US provisional does not provide proper "support" for your real patent application and that you cannot validly claim priority to it.  Or, more often, a competitor opposing the grant of your eventual patent says this, then uses your public disclosures against you.

Here are some links to read through for information. You can file an application similar to the US provisional at the EPO for free (at least, you used to be able to do so and I haven't heard that has changed).  If you want to pay the search fee, you can get useful information about the novelty of your invention in that first priority year as well (not available with the US provisional).  In any event, in your shoes I'd want to spend enough money so that my priority application was a document that well supports my invention.

Here are a couple of links with information about problems in claiming priority and also some comments about filing in EPO first instead of using a US provisional (some of the information may be dated, so verify before relying on it).
https://www.finnegan.com/en/insights/priority-pitfalls-in-european-patent-applications-based-on-u-s.html
https://secure.ipnexus.com/en/advice/questions/849

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MYK

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Re: Provisional Application equivalent
« Reply #2 on: 12-08-17 at 03:02 am »

In addition to the support problem, which our EPO members have discussed in the past (summary: you either pay up front to get a serious application drafted to EPO standards (which are extremely strict, quite different from U.S. drafting practices, and cannot be repaired after-the-fact) or you're going to get absolutely screwed), there's also the possible issue that some countries require their citizens to file an application in their home country first or else lose the right to a patent there.

I know the U.S. and China have laws requiring that.  Don't know about the EPO or Germany.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.
 



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