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Author Topic: Provisional Application equivalent  (Read 754 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.

Euro-Pat-Att

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Re: Provisional Application equivalent
« Reply #3 on: 12-17-17 at 06:23 pm »

Germany does not appear to require a first filing in Germany. In general that is. If the invention might concern a state secret you do have to file in Germany first.

At the EPO it is possible to file a patent application and not pay the official fees. For a year, you can still use it worldwide as a priority application. BUt you certainly won't get a patent out of that application. And you won't get a search done. And it will not become published.

I suppose that is pretty much equivalent to a US provisional.

If you would want a European patent, you'd have to refile within a year at EPO and pay the filing fee and search fee.

In order to get protection in Europe, however, either by the above route, or directly, or via a US provisional, or via a first filing in any other country, the text that is first filed needs to meet the same standards as a proper European patent application. You really can't afford to be less than perfect on you first filing, wherever it is in the world, if your aim is to ultimately get a European Patent. 


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Contact Patenthuis for all your European patent requirements. Opposition cases particularly welcome.

bartmans

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Re: Provisional Application equivalent
« Reply #4 on: 12-20-17 at 12:56 pm »

I fully agree with Euro-Pat-Att.

If you want to play the patent game this unfortunately means that you have to spend serious money to get a proper protection. Normally, you will be able to get a patent application drafted for 6-8 K Euro (but it may depend on the technology and the nature of your invention. Application for simple mechanical inventions normally come cheaper than applications for complex biotechnological inventions).

Consider your invention and the possible business as a new-born baby that needs care. Who would you trust your baby to?

Further, you do not need a US provisional, because you can have a cheaper application at the European Patent Office. However, irrespective of the office where you will file your first application, I would advise you to keep your invention secret for the first 18 months after filing the first application (i.e. until the moment that your patent application will become public). If you need to talk to other people (advisers, investors, etc.) please Always use a confidentiality agreement to make sure that your invention is kept secret.

The reason for the above is that your first application may not contain all details of your invention and thus will not be usable as a priority claim. If this is the case, this means that any publication after your 'provisional' application and your definitive application can be used as prior art to destroy the patentability of your invention.
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