Forums: Discussions for entrepreneurs and small business.

I am about to file a U.S. Provisional application now and follow that with a regular utility patent within the year but I will eventually want to file applications in Canada, the U.K., Germany and China.

 

Will the Provisional limit my options?  When do I need to file the foreign applications?  How should the PCT or Paris Convention figure into my strategy? 

Thanks for your help!

 

Rick

 

A provisional application is a fine way to go.  Then you have 1 year to file anywhere else.  Depending on your budget an how anxious you are to get the patents issued, you can file a PCT application at the end of the year.  Then you have an additional 18 months to determine which of the PCT countries you would like to enter into for the `national phase.`  There are a few countries that are not PCT countries, but not many.  I think all of yours are PCT countries.  If you would want to file in a non-PCT country, you`d need to file in that country before your provisional expires (one year after filing) regardless of whether or not you file a PCT application.

 

Kate

www.shapeacake.com

 

Thanks for your advice Kate!  That is very helpful. 

 

I was hoping that the provisional would buy me an extra year (1 year from the provisional date and a second year from the date of filing the regular application).  I now understand that was wishful thinking.

 

I understand that I also need to be aware of the "eighteen month publication rule" where a non-publication request needs to be withdrawn at least 45 days before the 18 month anniversary of the application date. Let me know if anyone has any experience with that.

 

Thanks again for your help and sorry for the delayed response!

 

Rick