Provisional patent application by foreign company

[cipo]

Hi
I am planning to file a US provisional patent application. Is there any restriction on the country of residence of the applicant ?
Can I apply for it even if I am an EU resident ? The US process seems much cheaper and faster compared to the EU method.
This way I would get 12 months time to prepare and apply on the regions I will deem most adequate.

THX
Cipo

[Brad]

Hi,

The US Patent Office does not have any rules or restrictions about where the inventors live.  They will take patent applications from any inventor in any country.  However, your country where you live may have rules that say you have to first get permission or a license before you can file a patent application in another country.  Here is a list of countries that have rules like this (note this list may not be complete so you may want to check with a patent attorney in your country):

Bulgaria
China
France (?may only apply to defense related inventions?)
Greece (Citizens of Greece)
India (Residents of India)
Italy
Malaysia (Residents of Malaysia)
New Zealand (Residents of New Zealand)
Poland
Portugal
Romania
Russia (Invention took place in Russia)
Singapore (Residents of Singapore)
Spain
United States (Invention took place in US)

Countries where Defense related applications need FFL
Belgium
Denmark
Finland
Luxenbourg
Netherlands
Republic of Germany
Sweden
United Kingdom

See this page:  http://www.wipo.int/pct/en/texts/nat_sec.html

[cipo]

Thank you Brad for the prompt reply.
I wasn't aware of that but I did my investigation cos my country of residence has restrictions as you reported.
I talked to the local patent office and they told me I can go ahead and apply to the US patent office without need to worry.
They told me that in my case I don't need any authorization nor anything else.

It seems I am good to go

Would it make any difference if I apply as a private person or via my own company ?

THX
CIPO

[Brad]

It does not make a difference from the USPTO point of view although if you as a person make less money then the company does then you may be able to save money on the filing fee.  You can see if you qualify for a discount here: http://microentitycalculator.com/Start-Here/

[cipo]

Hi Brad

if I apply for a provisional patent in US, am I allowed to apply (before 12 months) for the same invention also in EU (via a EU office) ?
Does filing the provisional in US hinder my capabilities in EU ?
THX

[Brad]

You should check with a European Patent attorney on this because I am not familiar with European Patent law.   However, it is my understanding that you can file a EU patent application within 12 months of your USA provisional and be able to link the two applications together.   I do not know of any drawbacks for doing the USA provisional first and then doing EU later. 

[cipo]

Thx alot