PPA to PCT application

[fitnessrebirth]

Hi Brad,

I have filed a PPA with the USPTO for an invention
of mine.

There is a much much bigger market in non-US countries for my invention.

My plan is to file a PCT application next.

My question is must I first file a Utility application with USPTO before filing a PCT ?

A follow up question: I am certain my product will be copied non-domestically as soon as I make it
public. Will having filed a  PPA and PCT give me any protection ?

Would you take a product as described to market with only filed PPA and PCT, or would you
file them and then attempted to get a large company to license the assumed patent (s) ?

And would you attempt to have them sign a non-disclosure agreement before showing them
the product even if you have filed a PPA and a PCT ?

Thank you

Kevin

[Brad]

Hi,

You can take a PPA directly to PCT as long as you file the PCT within the 12 month time period (i.e. within 12 months after you filed the PPA).  See this post I wrote here: 
https://patentfile.org/how-to-turn-your-provisional-patent-application-into-an-international-patent-application/

For your other questions, let me first clafity this is my general business advice and not "legal advice".

-People are always going to try and copy you if you have a good idea.  Simply filing a patent application (either PPA or PCT) will not let you stop people from copying you.  In order to stop people you will have to wait until you have an issued and valid patent with claims that cover the other product.     

-Would I personally take a product to market globally or try to license?   The answer to this question depends on the person and the product.  For me I have 3 little kids at home and 2 businesses I am running so I would certainly try to license as I don't have the time or money to launch a new product right now.    If I did have the time and money I would perhaps try to launch it in the USA because that is where I live and I would sell or license my patent in other countries.  It is a lot easier to license after you have sales and can prove the product has value.  Just watch the show "shark tank" and notice how the investors react with products that already have good sales vs. products that don't have many sales yet.   Its near impossibly to license or sell an idea until you have some sales proving that its a good idea.   

Having other companies sign a NDA is certainly a "best practice".

 

[fitnessrebirth]

Brad,

Thank you for your reply.

I have a follow up question after reading your article and reading through the forum posts.

If I plan on marketing my product globally ASAP, should I file a PCT app as soon as possible
within my 12 month PPA window, or a late as possible as I think was suggest in another post ?

Or does it not make any difference

Thanks a lot

Kevin

[Brad]

If it were me I would make sure my PPA is filed first and that it was a "good" PPA meaning that all of the figures were done professionally and labeled properly to show all of the key parts of the invention.    I would then file my PCT as late as possible (maybe at the 11 month point).    My reason for this is because I would by to defer or delay this big PCT costs as long as I could.

However, everyone will have different circumstances so that strategy may not work for each person and some people may need to file the PCT sooner if they are looking for investors that may only invest if they see the full PCT was filed. 

[fitnessrebirth]

Thank you.

Do you do PCT applications ?

Kevin

[Brad]

Yes.  We can write and file the PCT application (we file it in the international office in Geneva Switzerland) and we can handle the USA national stage process to nationalize in the US Patent Office. 

If/when you decide to nationalize in other countries you would have to hire an attorney or agent registered in each of those countries to help with that part of the process.

Thank you.

[fitnessrebirth]

Hi Brad,

What would the estimated cost be for you to file a PCT application based on a well done PPA ?

Also I have been doing a lot of research on the best way to proceed and came across the
 "Common Application Format " for drafting USPTO utility patents as well as PCT applications.

The way I see it,  is that since I have filed my PPA with the USPTO, I should next write (as best I can)
a PCT application in the  "Common Application Format" with  a very broad claim, that will be rejected,
but since the PCT is actually a place holder to extend the time to file patents in individual countries, and
it would include the USA as one  of the countries I plan to eventually file in, this would then extend up
to 30 months from my PPA filling the time that I have to actually file in the individual countries. And since
the PCT was written in the CAF format, I will have a template to use for having the individual country
applications written. And that extra time would allow me time to approach large companies with the finances to
patent my invention in numerous countries with a least the benefit of being able to say I have a PCT application
filed.

What do you think about this plan

Thanks a lot for any info you can provide.

Kevin

[Brad]

Hi Kevin,

I think that sounds like a good plan.  If you want to email me your files directly I can give you a specific price quote but in general our fee to write and file a PCT application is between $3,500 - $6,000 plus the PCT fees of $2,500 - $3,500.   Depending on how long or complex the application is that will determine the specific price.

Now, I think its great you are doing research and trying to write most of the application yourself.  There are many inventors who are able to do this and save money.  However, in my experience after reading 1,000s of patents written by inventors over the years most of them are not written properly and have to be re-done which sometimes actually takes us more time and costs more money than just hiring us to do it in the first place.   Also, although the format and layout of each application can be the same, the way you write the application (i.e. the way you describe things) and strategy is different for each country so a drafting strategy that works for the USA may not be a good idea for Europe.   This is why some patent attorneys can charge up to $800 per hour.  Its not as simple as simple as it may seem at times....

[fitnessrebirth]

Brad

Thank you.

I have some thinking to do

Kevin