A US provisional application must be filed in the US or any foreign country within 12 months of its filing date to benefit from the priority date established by the provisional application. As such, the provisional patent application provides the patent applicant with 12 months to decide in which countries a patent application should be filed (US or other jurisdictions).
However, in that same 12 month window, the patent applicant may choose to convert the US Provisional to an international, patent cooperation treaty (PCT) patent application. Here is how the process generally works for PCT applicants:
- PCT Application is filed (by 12 month filing deadline)
- PCT Examination Results received (6-8 Months from PCT filing)
- Select Which PCT member states in which you would like your PCT application recognized (within 30 months)
- Report your PCT Application and Examination Results to the member state (US/EPO/CA/CN/JP/RU/etc).
As such, filing a PCT application essentially takes that 12 month US deadline and turns it into a 30 month extension (18 additional months) for all 148 PCT member states. It is important to properly draft US provisional patent applications in anticipation to an international conversion. Consult a licensed patent attorney for this process.
If you are interested in more detail related to your situation it is best to speak with an attorney.
Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.
Source: Smartup Legal