Is There an International Patent Pending?

[listenup77]

Is there a provisional or something, to establish a priority date or "pending" status for international patent application? I wanted to get some prelim protection internationally, before going ahead with the big feed PTO application. I already have a provisional in the US and a non-provisional being worked on, but I know that is only good for the US and the majority of the countries only recognized a PTO application as first to come up with the idea or the first to file. Any suggestions?

 

[divgradcurl]

Is there a provisional or something, to establish a priority date or "pending" status for international patent application? I wanted to get some prelim protection internationally, before going ahead with the big feed PTO application. I already have a provisional in the US and a non-provisional being worked on, but I know that is only good for the US and the majority of the countries only recognized a PTO application as first to come up with the idea or the first to file. Any suggestions?

Going into the international arena is tricky, because most countries have a very strict "absolute novelty" requirement, which means ANY public disclosure (including an offer to sell) prior to the application for the patent may mean that the patent is not granted -- there is no 1-year grace period in most countries. So, if you are planning on filing directly in any other country, you'll likely need to submit your application before putting your product on the market.

However, if you go the PCT route (Patent Cooperation Treaty), you can claim priority from a U.S. provisional or nonprovisional application, as long as the PCT application is made within 12 months of the application from which you seek to obtain priority. Read here for started: http://www.uspto.gov/web/offices/pac/mpep/documents/appxt_r4_10.htm#pctrule-4.10

PCT practice can be complicated, and the time lines and requirements are different than those for the PTO, so you'll want to work with your attorney if you seek to do a PCT filing.

As far as whether or not there is a "patent pending" status in other countries, well, that would depend on the individual laws of each country in which you want protection, and certainly a U.S. patent application (provisional or nonprovisional) would be sufficient. A PCT application probably would, as long as the countries in which you were seeking the "patent pending" status were designated countries.

 

[listenup77]

Now in connection with that, is it better to have two non-provisional patents dealing with two main embodiments or just have a provisional for each of the main embodiments and then claiming both (joined) into a non-provisional application? I would think I would have more of a concrete protection with two seperate non-provisional applications, focusing on each key claim for that embodiment, instead of just throwing it all in together. But on the other hand, if filing internationally, that would be two PCT appl. needed to file instead of one. Or does it just not matter, as long as each specific key claim that makes up the paticluar embodiment, if written into the claim? Thanks.

 

[divgradcurl]

Now in connection with that, is it better to have two non-provisional patents dealing with two main embodiments or just have a provisional for each of the main embodiments and then claiming both (joined) into a non-provisional application? I would think I would have more of a concrete protection with two seperate non-provisional applications, focusing on each key claim for that embodiment, instead of just throwing it all in together. But on the other hand, if filing internationally, that would be two PCT appl. needed to file instead of one. Or does it just not matter, as long as each specific key claim that makes up the paticluar embodiment, if written into the claim? Thanks.

I have no idea what you are trying to do here, maybe it's just a misunderstanding of the word "embodiment." An "embodiment," at least in patent law, is one way of "practicing" the invention -- any invention can have multiple embodiments, but the different embodiments do NOT make up different inventions. A patent covers a particular invention -- as noted, the invention may have multiple embodiments, any number really -- but since there is only one underlying invention, there is only one patent.

If what you are talking about is really multiple embodiments of the same invention, then it would be incorrect to have multiple appications for each embodiment, and if you converted these multiple applications to nonprovisional applications, they would likely be rejected for obviousness-type double-patenting (the later-filed application is "obvious" in light of the earlier application). If these embodiments are really different embodiments of the same invention, they all need to be part of the same application, because you can only get ONE patent on a particular invention, regardless of how many emobodiments of that invention you might have. You can have as long a specification as you want, you can disclose as many embodiments as you want, you can assert as many claims as you can afford, but you can only have one application for a given invention.

Now, if what you are calling "embodiments" are really separate inventions, then you can't merge them into one application, because a patent can only cover one invention (although, as noted, the invention may have numerous embodiments). If you really have more than one invention in an application, the application will be subject to a restriction requirement, which means that you will have to pick one invention to go forward with (and then the usual practice is to file divisionals on the other inventions that are restricted out). Foreign patent offices, especially Europe, are even MORE careful about restricting the application to a single invention than is the U.S., in general.

Maybe if you could provide more informationit would be possible to advise you better. But given what you have written, I'm not completely clear on what you are trying to do.

 

[listenup77]

Yeah, they are different embodiments I'm talking about. I just figured, if I don't want additional embodiments described in my patent made public domain, I would have to make the embodiment into an application itself. I read that if you don't claim the differences in the embodiments, the one not claimed will just become public domain. But, since you say, one can have as many claims they want in an application, then in order to prevent this I would just make sure the differences are also worded in the claims. Hope I was clear this time around. Thanks.

 

[divgradcurl]

Yeah, they are different embodiments I'm talking about. I just figured, if I don't want additional embodiments described in my patent made public domain, I would have to make the embodiment into an application itself. I read that if you don't claim the differences in the embodiments, the one not claimed will just become public domain. But, since you say, one can have as many claims they want in an application, then in order to prevent this I would just make sure the differences are also worded in the claims. Hope I was clear this time around. Thanks.

Well, as I noted previously, you are not necessaily limited by your claim language -- unless the limitations in the claims are very clear and precise, and claim language will be "defined" by the specification, to some extent. Limited by prosecution history estoppel, of course.

If you disclose stuff in your specification that you don't claim, then yeah, it ends up in the public domain (although you can file divisionals and continuations if you discover stuff that is disclosed but not claimed, and youdon't want to hold up the issuance of your first patent.

 

[listenup77]

Thanks for your Divgradcurl.