provisional patent application


5

I submitted a provisional patent application from an foreign country to the USPTO a few months ago. I researched and found out my idea worth a non-provisional patent application. (I made it public.) Is it possible for me or my lawyer, who are not-residents of the USA, to go there to submit a non provisional application with my passport? Or are non-provisional applications to the USPTO office for USA residents only?

Patent Provisional Patent

asked Jan 8 '13 at 18:30
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John
26 points
  • Why not submit a PCT patent in your home country? – Littleadv 8 years ago
  • i prefer USA as my provisional is submitted there to claim priority date (as i made it public) – John 8 years ago

3 Answers


1

There is no residency or citizenship requirement for filing. However, you would be wise to seek the help of an agent or attorney admitted to practice before the Patent Office, and they will likely be a US resident. In particular, there is a recent change to the law that suggests you may want to convert the provisional to a non-provisional within the next few weeks.

Either way, you can file the application electronically without needing to travel to the US.

The link for the USPTO's electronic filing system is here:
http://www.uspto.gov/patents/process/file/efs/index.jsp

answered Jan 13 '13 at 02:25
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Yorick
826 points
  • It is a very rare situation that you would convert a provisional application to a non-provisional application. Instead, you file a non-provisional application that claims priority to the provisional application. – Kekito 8 years ago

1

The U.S. doesn't care what your citizenship is when you file a patent application (provisional or non-provisional). You could file the non-provisional application yourself but you should hire an attorney to do it as there are many important details.

One very important issue is that your own country might place restrictions on you filing a patent application in another country. Many countries require you to either (1) file the patent application first in your own country or (2) obtain a foreign filing license before you file the application in another country. You may have already broken your own country's laws by filing the provisional application.

You stated that your provisional application is public, but that is not possible until after you file a non-provisional application. You have a misunderstanding in that respect.

answered Jan 13 '13 at 15:46
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Kekito
1,936 points
  • Can you give an example of such a country? I've never heard of this before. For example, most multinationals will file patents in the US for inventors employed overseas, owned by some low-tax Bermuda company, and they are usually not breaking the law. – User239558 8 years ago
  • @user239558 - it's for inventions that have security implications. Your government probably doesn't want you filing your invention for a death ray for everyone else to read, so they have rules to block patents for national security reasons. If you don't work in aerospace or defense it's probably not an issue – Mgb 8 years ago
  • @user239558, India is one example. Multinationals will obtain the foreign filing license for foreign inventors. It is easy to get, you just have to fill out paperwork and pay a fee. Although security implications is a motivation, it applies to all inventions and not just those with security implications. – Kekito 8 years ago

0

Your strategy depends on whether your country is a Paris Convention Member and what your local filing status is. Non-US resident doesn't come into play here - non-provisional patents can be assigned to non residents. Review this article and this "Protecting Inventions Internationally" scenario - then go work with your IP lawyer.

answered Jan 9 '13 at 01:27
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Jim Galley
9,952 points
  • Conventions apply to countries and not to individuals. The Paris Convention is not relevant here. – Kekito 8 years ago
  • @Kekito - to educate us, [review this article](http://www.ladas.com/Patents/patintl.html) and point to a relevant source that Paris Convention rules don't apply here. – Jim Galley 8 years ago
  • @jimg I also don't understand what the Paris Convention has to do with this. It is entirely unclear whether the questioner is even interested in a patent in his home country. I hold only US patents, but I am not a resident, and I couldn't care less whether my patents are enforceable in my home country. – User239558 8 years ago
  • Your local filing status (or lack thereof) has relevance in determining priority - and since the poster seems to be concerned on priority, consideration of both "patents are of national origin" and the fact that certain countries require that local rules and regulations be complied with before foreign applications can be lawfully filed. If the inventor does not file locally, there could be a risk that a relevant patent is already been issued that could claim priority - and (depending on gov't) how such priority is claimed would be governed by Paris Convention rules. – Jim Galley 8 years ago
  • See [Protecting Technology and Inventions Internationally](http://www.ladas.com/Patents/patintl.html) for additional perspectives. – Jim Galley 8 years ago

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