Provisional patent applications are generally known in the startup community as a cheap way to protect your patent rights, but finding practical information can be difficult. Below are some frequently asked questions from clients regarding provisional patent applications. Please note that the information provided here is general information and does not constitute official professional advice. For formal professional advice, please contact a PCK expert.
Will my provisional application give me worldwide patent rights? A provisional patent application provides patent protection only in the United States. However, in most cases, a U.S. provisional application can be used as a basis for filing in other countries for up to one year, as long as the invention has not been previously disclosed. When you formalize your provisional application, you will need to decide which countries you will be filing in and pay each country’s filing fees. The decision can be delayed for another 18 months by filing a formal patent application as his PCT application. This extends protection to most countries around the world (with notable exceptions being Taiwan and Argentina). After 18 or 30 months from the provisional filing date, you must select the country in which you will apply and pay the filing fees for each country while filing the provisional patent.
Can I file a provisional patent application in Canada?
More or less. Unlike the United States, Canada does not have a formal provisional patent system. However, after submitting an incomplete application to the Canadian Patent Office, you may submit a complete version within 12 months.
The disadvantage of a Canadian “provisional” application is that it costs the same as a regular application, but the USPTO offers a discounted rate for provisional applications. Another drawback is that Canadian applications are automatically published online approximately 18 months after filing unless you request that the application be withdrawn from publication. In contrast, the US Preliminary Edition will not be published. This is useful if you want to keep your invention secret if you decide against filing a formal patent application.
For these reasons, Canadian “temporary” is usually only recommended for startups that operate exclusively in Canada and have no interest in obtaining patents abroad.
Can I write the preliminary version myself?
Yes, you can make a preliminary application yourself. This route is risky and can lead to inadvertent mistakes later and patent infringement. In an ideal world, provisional patent applications would be “formally ready” and written by patent experts, but for lean startups, a self-written provisional patent application may be appropriate. . PCK runs a seminar titled “How to Write Your Own Provisional Statements”. Check the event page for upcoming dates.
When does a provisional patent application expire? A provisional patent application automatically expires 12 months after the filing date. No extensions available.
Can I resubmit a preliminary review after it has expired?
Yes, you can resubmit your provisional patent application after it has expired. Please note that you can resubmit only after the original provisional patent application has expired. Unfortunately, this means you will have to pay back the registration fee and (more importantly) lose the benefits of your original registration date. This means that prior art published between the original filing date and the new filing date will be disadvantaged when the Patent Office evaluates a formal patent application. Also, if someone files the same invention before you file again, their patent claims will take precedence over yours.
Should I be an applicant or start a company?
In most cases, we recommend setting up a company as the owner and applicant of the patent application. Ownership issues can be very nasty and costly to resolve later, so we encourage you to get involved now and put all your business assets in your company’s name. If you are the sole inventor, you can defer this decision, but if you have co-inventors, filing a patent application on behalf of both inventors is very risky.
What if there are multiple inventors? There is no limit to the number of inventors named in a patent application. Each inventor must sign an assignment document granting their rights to the applicant. B. Company relocates.
Can I file a provisional application even after I have notified my invention?
perhaps. If he disclosed the invention less than one year prior to filing the provisional patent application, he may still file a U.S. provisional patent application, but he cannot file internationally based on the provisional patent application.
