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Patenting Strategy: priority filing

Once the decision, whether to file a patent, is taken positively, one needs to decide, how to proceed and where to file first. As mentioned before, idea protection is long and costly process, therefore it is very important to choose wise patenting strategy. That might save money and make the patent stronger.

filing priority patent

Two approaches for priority applications

Basically, two different approaches exist for idea protection by patent filing.

1. Assuming that the  invention is well developed and key features are very well described - in sufficiently broad and detailed fashion, in priority application filing is less important, which country to choose; therefore only application cost is considered and the fastest possible filing date is sought;

2. Assuming that the ideas to be protected are rather new and undeveloped, a route of US provisional patent application filing is popular. In this case it is very important to have a specification prepared as detailed as possible, whereas the claims can be not full.

The second option deserves better explanation.

Provisional application - in general

Provisional application as the priority application is very popular in US and also attracts a lot of foreign patentees. The meaning of provisional application is that the applicant files the application, which might be not in the final terminology or containing just preliminary draft of claims, etc. Then the applicant has up to 12 months for filing a normal patent application, by claiming priority of the provisional application or convert the provisional application to regular patent application. The priority period, during which the applicant has to file further applications is different in both cases. In case a regular patent is filed separately from the provisional application, the 12 months period for extension of the patent is calculated from the filing date of the regular patent application. Whether the application is converted from provisional to a regular one, the 12 months  period is calculated from the date of provisional application filing.

Another risk related to provisional patent applications is that further improvement of patent specification and claims might differ too much and the expert might ask to correct it or withdraw the regular application. Also in the website of USPTO, there is such sentence: "These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries". In our practice this has not happened, but one has to keep in mind that first of all patents are treated according to the national law in each country.

Other ways of priority filing

Except of national patent applications, international or regional patent applications might be filed as priority patents as well. PCT, EP applications are also well suited for priority applications filing, just maybe for PCT the filing procedure is more complicated and might take more time to file.

To summarize, priority application filing decision depends on level of perfection of the idea to be protected and the overall patenting strategy, like number of countries, desired time-frame and available funds. Also with US provisional applications there are certain risks that the priority date might be not recognized in other countries, which happens very rarely I guess.

The floor is open for your questions!