US provisional applications and other countries

[fishbeak]

What is the name of your state (only U.S. law)? Massachusetts

I am thinking about getting a patent. I realize it is expensive and I need a real patent lawyer. However, I am wondering if I can file a provisional patent application in the US now, and then start demonstrating the invention publicly and assessing commercial viability.

Now I know that I can start demonstrating and selling immediately, so long as I file within one year in the US. But I would not be able to file in other countries if I did that. If I filed a provisional application in the US before the first demonstration or offer for sale, would that protect me and preserve my right to apply for a patent in other countries? Which other countries? Is there a website which goes into more detail?

I have talked to a lawyer about this once, but I need an answer from the experts on this forum for various reasons. Thank you.

 

[divgradcurl]

What is the name of your state (only U.S. law)? Massachusetts

I am thinking about getting a patent. I realize it is expensive and I need a real patent lawyer. However, I am wondering if I can file a provisional patent application in the US now, and then start demonstrating the invention publicly and assessing commercial viability.

Now I know that I can start demonstrating and selling immediately, so long as I file within one year in the US. But I would not be able to file in other countries if I did that. If I filed a provisional application in the US before the first demonstration or offer for sale, would that protect me and preserve my right to apply for a patent in other countries? Which other countries? Is there a website which goes into more detail?

I have talked to a lawyer about this once, but I need an answer from the experts on this forum for various reasons. Thank you.

A provisional patent application that is later converted into a nonprovisional application can serve as a "filing" under the PCT for the purposes of preserving "absolute novelty." It's a little complicated, but see 35 U.S.C. 111(b), 35 U.S.C. 119(e). 35 U.S.C. 363 and Article 11 of the PCT. Basically, because the provisional is a good filing date in the U.S., it is also good enough for the PCT.

However, to avoid any possible novelty questions, you are going to probably want to spend more time on the provisional than you might for a normal U.S.-only filing. Although a claim is not required for the U.S. provisional, you will likely want to draft at least one claim that includes all of the limitations you intend to claim later, along with a complete set of drawings, when you file your provisional, in order to avoid any PCT questions later. Different practitioners may have different advice on this point, but this is what I have heard to be good advice.