Patent and Invention Help Forum

Patent and Inventing Discussion => Patent Questions and Advice => Topic started by: DeepOrange on April 28, 2019, 10:29:19 PM

Title: Overseas inventor filing for PPA in US
Post by: DeepOrange on April 28, 2019, 10:29:19 PM
Hi Brad.
I am a non-US resident and I intend to submit my invention to a number of US companies for licencing.
Presumably when converting a PPA to a non-provisional, the patent will cover a number of countries (PCT).

Does it make any difference position if I file for a PPA in my country of residence (Australia) or in the US?

The reason I ask is because it appears that the registration process for the USPTO online filing system is quite complex and requires numerous Patent Electronic System Verification forms to be snail mailed to them before a I can get approval to submit a PPA.
This will undoubtedly take weeks and time is of essence, whereas I can file it locally within a day.
Title: Re: Overseas inventor filing for PPA in US
Post by: Brad on April 29, 2019, 03:01:40 PM
Thanks for the questions.  A few thoughts I have on this:

1) you can file your USA PPA as an "unregistered" filer without waiting for any approvals or snail mail:
https://efs.uspto.gov/EFSWebUIUnregistered/EFSWebUnregistered


2) I don't know enough about the Australian patent system to comment on going from an Austrialian PPA to a PCT.  I know you can go from a US PPA to a PCT but not sure if an Austrialian PPA will count (my guess is that it should but I would check with an AU attorney to confirm).

3) I don't think Australia has any restrictions on foreign filings without a foreign filing license (some countries require you to get permission before you file your patent overseas) but please check with an AU patent attorney to confirm.

Thanks


Title: Re: Overseas inventor filing for PPA in US
Post by: DeepOrange on May 02, 2019, 08:38:01 PM
Thanks Brad,

I did check and was told that it should be ok to file locally.
Australia does support PCT and I am not aware of any permission requirements for foreign licencing.

 :D :D