How to convert a UK provisional patent into a US patent?

[winterstein]

Hello,

My company has filed a UK provisional patent. That is coming to the end of it's 1 year life. We want to file the non-provisional patent in the USA. We'd like to keep the UK priority date though - if possible.

What should I do with the UK provisional patent in order to use it in the US application? Do I need to pay to extend it by a few months? Just let it lapse? Withdraw it? Or something else?

Thank you for any help you can give.

Best regards,
- Daniel


--------------------------------------------
Dr Daniel Winterstein
winterwell.com / sodash.com
Registered in Scotland, company no. SC342991

 

[David Warrilow]

Hi Daniel

I'm a patent attorney at London IP.

To seek protection in the US you should either file a PCT application or a direct national US patent application claiming priority from the UK application.

If you wish to continue seeking protection in the UK then you will need to file claims, abstract and request the official search (and pay the relevant fees).

You may need to make amendments before filing any further application; obviously I can't provide advice on this without full details of the case.

If you need more information feel free to pm me.

Cheers

David

 

[winterstein]

Thanks David.

I've now submitted a utility patent to the US Patent Office as you suggest. And dropped the UK application.

 

[shandp]

Hi Daniel

Interesting you should call it a UK provisional application. Any UK patent application can be pursued as a full UK patent application (there is only one sort of UK patent application) as long as you file the necessary documents and pay the right fees etc. In the US there is a type of patent application that is called a provisional and this is only is existence for the first year: it can't ever be a full US patent application (you have to file a "utility" patent application which can claim priority from the provisional for that).

To claim priority of the UK application (under the Paris Convention) you just need to give the filing date for the UK patent application and the application number (they will be on your filing receipt from the UK Intellectual Property Office) to your US patent attorney when you ask him/her to file your US patent application. You may have to give your US attorney a certified copy of the UK application as filed. You can get certified copies from the UKIPO (Patent form 23 and fee).

What else to do with the UK patent application depends on whether you want patent protection in the UK. A US patent application covers the US but has no effect in the UK (because patents cover particular jurisdictions). If you want a UK patent you could (1) file a new one (within the 12 month period claiming priority from the first), (2) complete the first one by completing the outstanding requirements or (3) you could file a European patent application (covering the UK) or an international (PCT) patent application (also covering the UK) the EPA or PCT claiming priority from the UK.

Hope this helps please feel free to contact me if you want further information.

James Knowles