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Author Topic: International Provisional Patent Application  (Read 314 times)


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International Provisional Patent Application
« on: 01-10-18 at 11:03 pm »

Hello.  Is there an existing means of preserving a filing date similar to the provisional patent application for international patentent protection?



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Re: International Provisional Patent Application
« Reply #1 on: 01-11-18 at 12:15 pm »

Yes, it's called a "provisional patent application". :)  In most countries, you get to claim priority to your U.S. application if you file within a year.  To be safest, you can file a PCT application claiming priority to the provisional instead of filing a U.S. national application.

However, standards differ among different countries, and the best drafting practices for, e.g., European patent applications are bad for U.S. applications and vice-versa, for example, multiple-dependent claims in European applications, the typical (but not best practices) omission of claims in a U.S. provisional, rigid adherence to literal support of the claims in European applications even in the original provisional or else no priority. . . .  No idea about China's requirements, and India seems willing to screw over anyone who isn't Indian.

Check with multiple practitioners, each experienced in a jurisdiction you feel is highly important to you, get a consensus, and go from there, I guess.  It gets messy.

If you're mostly worried about Europe and the U.S. (the two biggest markets), my best guess as to strategy would be to draft for Europe, file as a provisional or PCT with the USRO, then replace the claims when you file a U.S. national application.  Hopefully someone will correct me if there are better ways to do this.
"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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Re: International Provisional Patent Application
« Reply #2 on: 01-17-18 at 10:05 am »

The term 'provisional application' in this respect is peculiar. This type of application, which is characterized by a low filing cost and which will only last for a year, is typical for the US (and may be one or two other countries).

The general principle, which is made possible by the priority system as laid down in the Paris Convention, is that one files a first (normal) patent application in one country (called the priority application or 'premier depot') and then follows this up with a definitive application (within) 12 months after this first filing. This second filing in many cases will be a PCT filing, but this is not necessarily the case.

Under this system it is thus possible to file your first application in any country (as long as it is a Member State of the Paris Covention) and follow this up with one or more applications in other countries (also members of the Paris Convention). The choice where to file first can be limited for other reasons, though.
One of the reasons is that a national patent law may require for residents and/or in case th einvention is done in that country to file the first application nationally (e.g. the US). In some cases, this is only a requirement when the topic of the application has to do with national security. Circumvention this obligation is possible by timnely requesting a foreign filing permission.
Another limitation can be the language in which the application may be filed. E.g. for filing a provisional application in the US, filing in English is obligatory. Filing with the European Patent Office may be in English, German or French (and, as a matter of fact, you will get a filing date at the EPO irrespective of the language in which you file, you may even file in Klingon).
Another factor that may be relevant for filing is whether or not you get a (cheap) novelty search and written opinion during the priority year. This is unavailable when filing a US provisional, but you may obtain a cheap search when filing in the UK, the Netherlands or Belgium.
Some other considerations may play a role, but the above are the most important.

Further, if you want to file really cheap, you can file at the EPO, in many European countries and even at WIPO without paying any fees. Your application will then automatically be deemed withdrawn after some time (which also means that you will not receive a search) but the application can still serve as a priority application for a later filing.


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Re: International Provisional Patent Application
« Reply #3 on: 01-17-18 at 12:37 pm »

To MYK's comments about best practices differing across jurisdictions, I file all of my US provisionals with a full claim set which is fully multi-dependent.  That same claim set goes into the PCT and eventually EPO.  When I file the US utility at the time of the PCT filing, I back out the claims to regular US-style single dependents.

The main reason for having the multi-dependents going into EPO is to provide more flexibility for making combination amendments, if needed. 

The main reason for doing so at the US provisional stage (rather than at PCT or EPO entry as national phase) is to have priority support for the claims all the way through in case of opposition upon EPO grant.


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