Filing a Provisional Patent in California: Your Complete Guide
November 11, 2024
Patent applicants pursue patent protection only when, and where, a value proposition can be rationally articulated so as to ensure to substantiate the costs of global patent protection. The enterprises should consider their short and long term commercial strategy, including their competitors and the possible future of the industry. This helps in assessing the value of technology, which looks after the rational decision making.
The date of filing of the first or earliest patent application is known as the priority date. At the time of initial filing decision, the enterprises should carefully consider the claim scope during patent prosecution and after patent issuance, or else the enterprises might carelessly invest in resources in patents that describe the critical technologies, but whose claims provide insignificant commercial value. A mindful patent strategy helps in providing strengths and weaknesses in the patent systems globally. This further helps to monitor all the current conditions and the emerging trends on a country-by-country basis and helps in changing course when applicable.
The revenue data helps in guiding the strategy for the decision-makers who only have a general impression of the primary countries involved in the manufacturing and selling of the company products. Thus, revenue data helps in confirming which markets around the world and significant and thus can be considered worthy candidates for patent protection.
A fair global patent strategy helps in seeking coverage with respect to the company’s broader monetization aspects. For instance, during prior art search, patents may be searched in both primary and secondary fields of use and in countries not core to the businesses but where future licensing is contemplated.
During certain situations, patent applicants decide not to pursue a patent application even after filing of a provisional patent application. There may be various possible reasons for dropping a patent asset, including, the recognition that the anticipated or granted claim scope does not provide sufficient value, a change in the innovation that renders patent protection unnecessary, or, a weak patent system in the corresponding jurisdiction. It further ensures that as circumstances change, the companies adapt their global patent strategy to redirect resources to more productive uses.
The patent filing process begins with patent searches, and leads to Patent Cooperation Treaty (PCT) applications, which may use the Patent Prosecution Highway (PPH). For global patent protection, flat fee charges are offered by law firms and translation service providers, which provides the advantage of reducing the costs of global patent filings, and providing better patent quality at the same time.
Therefore, an ideal global patent strategy seldom is attained when the decisions are driven by leaders’ particular assessments of the value of individual technologies. To attain a fair strategy, decisions should be informed by, a holistic view of the technology landscape, an appreciation of patent scope, an appreciation of material differences in patent regimes around the world, and, product revenue data by country.
Patent attorneys handling PCT patent filings work with clients to create a strong patent portfolio. In use, a patent portfolio includes published patent applications as well as granted patents. To work on a patent portfolio, patent data is retrieved from internal as well as public database sources.
Patent law encourages scientific research, new technology as well as industrial progress for the public good. The exclusive privileges to own, use or sell the method or the product patented is granted for a limited period of time, which stimulates new inventions of commercial utility. The cost of the grant of domination is the disclosure of the invention at the Patent Office, which after the expiry of the fixed period of the monopoly, passes into the public domain.
Innovators opt for filing of PCT International Phase Patent Application for facilitating patent protection across multiple countries and jurisdictions. The international patent system allows the patent applicant to file one international patent application before WIPO. To get patent rights internationally the patent applicant has to file an international patent application before WIPO authority. The international patent filing process is online via the WIPO ePCT. The patent applicant has to submit invention details like patent claims, patent abstract, patent drawings (if any) and patent description. The international patent application can be simultaneously filed for patent protection in member PCT countries as national phase patent application.
Generally, the first step in applying for an international patent is to file a provisional or non-provisional patent application in the home country of the patent applicant. Once a provisional patent application is filed before the patent office a PCT patent (international patent) can be filed before WIPO within 12 months from the first patent filing date. Identifying your business goals is very important. If your business has a market in one or more foreign countries, it is advisable to apply for an international patent before WIPO to protect your legal Intellectual Property Rights.
The cost of applying for an international patent will include the patent filing fee, international patentability search fee, and transmittal fee, and the exact fee structure would be dependent on whether the patent applicant is an individual or a company. The fee structure of international search authority [ISA] will be dependent on which authority is selected by the patent applicant.
The international patent application is also known as PCT patent application. Any international patent application can enter India under PCT National Phase as India is a member of the Patent Cooperation Treaty. Patent attorneys in Indian law firms have handled PCT patent application filing and patent prosecution in India for over a decade. Patent law firms in India also have an association with foreign lawyers and they act as a one-stop solution provider for patenting needs of foreign clients in many countries.
We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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