I am working with a patent attorney to convert my provisional patent into a full patent. The provisional was filed 1 year ago on the 18th of this month and the full will meet this deadline woth little problem.
The concern now is the protection of international rights. My attorney wants about $4,000 to file a PTC to give us another 18 months to file international patents. It was my inderstanding that one has 2 years from the filing date of the U.S. patent to acquire international patents. Being as my filing date will be pre-dated to the filing of the provisional, I thought that it would leave me with one year to get the internationals. Aparently this is not the case as the attorney wants to file this PTC form ASAP (as in the next few days).
If I can't raise the 4K, will I be unable to get patent rights in other countries in the future, or is there something I am missing here?
The concern now is the protection of international rights. My attorney wants about $4,000 to file a PTC to give us another 18 months to file international patents. It was my inderstanding that one has 2 years from the filing date of the U.S. patent to acquire international patents. Being as my filing date will be pre-dated to the filing of the provisional, I thought that it would leave me with one year to get the internationals. Aparently this is not the case as the attorney wants to file this PTC form ASAP (as in the next few days).
If I can't raise the 4K, will I be unable to get patent rights in other countries in the future, or is there something I am missing here?
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SF Bay Area
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Re: Protecting International rights (URGENT ASSISTANCE REQUESTED!)
Tue, August 30, 2005 - 1:16 PMJeremy,
I'm sorry I didn't see this post earlier. There are several things you should know about foreign filing.
1. You can claim the benefit of your U.S. filing date (your provisional filing date) if you file your foreign applications or PCT application within a year of the provisional filing. If you don't file within that year, you may lose your right to obtain a foreign patent.
2. The $4,000 fee your attorney wants is just a drop in the bucket when it comes to the national fees you'll have to pay when you finally select in which countries you would like patent protection.
3. Just because you do not file your PCT application within the year, does not mean that you are completely out of luck. You will not be able to claim the benefit of the U.S. priority date, but if nothing has becomre prior art to the invention before you file your PCT you can still obtain foreign patents. However, you may have done some things on your own that will bar a foreign patent if you cannot rely on the U.S. priority date. For instance if you began selling your invention the day after you filed your provisional application. that sale would prevent you from obtaining foreign coverage if you cannot rely on the provisional priority date.
That being said, i have to issue my disclaimer:
(The information provided herein is not intended to be legal advice, but merely conveys general information related to legal issues. The information provided is not guaranteed to be correct, complete, or current. I make no warranty, expressed or implied, about the accuracy or reliability of the information provided (although I'm usually right). You should not use this information as a substitute for retaining competent legal counsel (I research things better when I'm getting paid).
Furthermore, this communication is not intended to create any legal relationship between you or any reader and me.)
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Re: Protecting International rights (URGENT ASSISTANCE REQUESTED!)
Tue, August 30, 2005 - 7:24 PMCanada used to have a grace period of, I think, one year from the time you should've filed your PCT (or Canadian, or any other country) application. So you might be able to still get Canadian protection. You're outta luck ofr most of the others, I think. Europe might have a grace period, but I really don't know.
Good luck!
