Fundamentally, the process of filing a PCT patent application is largely determined by the individual’s particular circumstances. It is important to recognize that there are four primary starting points from which a person might be embarking when applying for a PCT patent application. First, the individual might already have a pending provisional patent and decides that it would be beneficial to gain international protection. Secondly, the inventor may have a regular U.S Patent application on file and he/she determines that he would also like to extend his coverage internationally. Third, the individual might have a foreign application on file and would like to get international patent protection with the PCT. Finally, the inventor is starting brand new and immediately recognizes the immense importance and benefits of acquiring international patent protection. Of course, depending on the inventor’s history and circumstances, the process may be slightly different.
Noteworthy, if there has been a public disclosure of the invention prior to the priority date, which could for the provisional, U.S application etc., the inventor is not entitled to international protection. Therefore, the individual might make the decision to file the PCT patent application based on other factors. Perhaps the most alluring of these factors is the expedited examination of the application in the United States patent office.
Let us first examine how our firm proceeds with the individual already in possession of a provisional. Our head patent attorney will engage in an in depth discussion with the inventor and gain a rich understanding of the inventor’s initial invention when the provisional was filed and how he/she would like to modify it for the PCT patent application. This conversation will ensure that the PCT patent application will be comprehensive and contain a fuller and more robust understanding of the inventor’s ideas. Additionally, during this intake, our Attorney will relay the critical importance of filing the PCT patent application within one year of the filing date of the provisional application.
For the individual who has already submitted the regular U.S patent application, the process is slightly different and takes into account the less then malleable nature of his application. Unlike the previous example, the U.S application may be revised only far as its formatting and claim language. However, it the substance of the application cannot be changed for the PCT application. Therefore, our attorney will work closely with the inventor to improve the application already submitted and ensure that the formatting and the language of the claims meet the PCT standards.
When an individual already has a foreign application, the same standards and methods must be employed as with the case of the individual with the U.S patent application. However in this case, the foreign application will be modified and revised to meet the requirements of the U.S patent office. After a comprehensive discussion with the inventor, our attorney will then file the PCT patent application using the U.S patent office as the receiving office. Finally, we will select a country to do the initial examination based on the nature of the invention.
Lastly, in the instance of an individual who has not yet filed an application, either a provisional or full patent, we first have an exploratory discussion with the inventor and gain a foundational understanding of the client’s invention. Our attorney will then conduct a full assessment of the invention and prepare a complete application including a comprehensive explanation of the invention and subsequent creation of the claims and drawings. Once the application is prepared, it is forwarded to the inventor in order to make sure that it covers all of the client’s ideas and expectations. Finally, our attorney will arrange the application to meet the legal requirements of the U.S Patent office in addition to the International requirements.
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Howard M. Cohn & Associates has extensive and varied experience in all aspects of Intellectual Property law, with a unique specialty in patent and trademark preparation and prosecution. Schedule an appointment or call us at 800-613-1067.