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According to the official documentation, the equivalent of provisional applications in the UK is to file an application without requesting search or examination, and subsequently, within 12 months, submit a related priority application for that invention.

What isn't clear in that documentation is whether this initial application needs to contain the claims or simply full disclosure in form of description + related work + figures is sufficient.

If that's the case, would there be any benefit in adding claims to the initial application, or would it be more convenient to add them only to the priority application?

And related question: if an inventor would like to take this route to get to a PCT application, would the deadline be 12 months from the initial filing? If so, going provisional with the UK filing would mean that the patent would still have to be evaluated by the time of the PCT application, or how much time would the applicant have to apply for PCT from the initial application in the UK?

In this case, what would be the correct procedure and timeline to go 1. provisional 2. final 3. PCT 4. individual countries?

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I am not familiar with the requirements of UK's IPO when it comes to according a filing date, which is the relevant act for generating a priority right. At the EPO you can follow the same procedure suggested in the documentation you refer to, i.e. file an application but not proceeding further with it, and for according a filing date all you need is:

(a) an indication that a European patent is sought;

(b) information identifying the applicant or allowing the applicant to be contacted; and

(c) a description or reference to a single previous application.

The EPO is very explicit, you just need a description to accord a filing date. So the addition of claims is entirely up to you, and in no way that will influence the generation of a priority right. Perhaps at the UKIPO it is the same, but I do not know.

Should filing claims not be necessary, then adding them in that 'provisional' strictly speaking has no real advantage if the description is well-written. Notwithstanding, I personally like to have claims drafted and have them written somewhere in the application, just because they provide explicit support for claim amendments later on. The dependencies of the claims are very useful in that regard, but if you draft the description carefully you can have the very same support even without claims.

Regarding the other question, the provisional will start the priority timer. At the end of the 12-months period from the provisional you must file every application you want to file that is to benefit from that priority. So if you ultimately want to have a PCT application with a valid priority, that PCT shall be filed no later than 12 months after the provisional.

The provisional UK application will not be examined or searched by the patent office, so you will not have any patentability opinion by the time you file the PCT. If you want a patentability opinion you need to pay the fees, but I do not know if the UKIPO is committed to draw up a search report like the EPO does in 6 months.

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  • @the Europeist: thanks for the clear answer. My main interest in going UK first is in the relatively inexpensive fees. And, also to buy some time in order to wait for the upcoming EU Unitary Patent when it comes to coverage in the EU. I'm not very knowledgeable on the matter, but from what i could read, it would be a lot of convenience both in practical terms and in economic terms. So with this approach would it be correct to say Month 0: file UK provisional Month 12: progress UK, file PCT Month 30: file EU unitary patent (and other countries of interest) ? – Pa_ Feb 10 at 22:34
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    @Pa_ Not sure what you mean by 'progress UK'. Other than that, yes, PCT at month 12 at the latest, and you can enter into EP regional phase up to month 31 (you can delay it by approx. 3 months paying some additional fees). I'm not very optimistic about Unitary Patent, I think it will still take some years. Not everyone sees UP as positively as you do, depending on where you want to protect the invention it will be more expensive than the regular EP, and if it gets revoked at the Unitary Courts you lose protection in all States. – the Europeist Feb 11 at 10:15
  • @GeorgeWhite You have the same benefit with the pseudo-provisional. It is a regular filing but it doesn't cost you a single penny. You must file a non-provisional so to speak at month 12 at the latest, so the 20-year term starts at that time. But if you pay fees in the first application (say EP), you get a search report at month 6, you can abandon that application and file the definitive application (e.g. EP, PCT) and get the search fee reimbursed. That provisional de facto will cost you less than 200USD and you get a search report during the priority year. – the Europeist Feb 11 at 10:20
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    @Pa_ It all depends on your interests. If all you want to do is buy time at the minimum cost, you file the 'provisional' UK or EP without paying any fees, file the PCT 12 months afterwards, and enter from the PCT into the European regional phase at month 31. If you want to have an opinion about your invention (novelty, inventive step, clarity, sufficiency of disclosure), you file the EP first paying taxes, get the search report, and then file the PCT. – the Europeist Feb 11 at 21:14
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    @Pa_ Very limited amendments in the description are possible. The PCT is a brand new application, so you can file that PCT with different contents, but not amend it afterwards. That is why a European Search Report is so useful at month 6 or 7, because if there are problems in your original EP application maybe you can fix them when filing the PCT. – the Europeist Feb 11 at 21:17
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As there is no provisional filing in UK, you have the (nice) option to file a patent and not pay for it. If you do that before 31 March 2021 the cost will be £60, after that date it will be £75 when you decide to pay for the Search £150 and Sustantive examination £100 after the 12 months of the filing date.

When you file (and don't pay) you do not need to include claims nor abstract, you can send that latter (12 months limit)

https://www.gov.uk/patent-your-invention/apply-for-a-patent https://www.gov.uk/patent-your-invention/after-you-apply

But if your plans are to go latter via PCT I would recommend you to go directly without middle steps.

If you want to save money on the PCT search report you have to add someone to the application (applicant of convenience) to increase your ISAs options (International Search Authorities) because if you are an UK citizen living in UK your only ISA available is EP (One of the best/Most expensive).

The search report fees goes from 34 USD (India) to 2091 USD (EP/AT/ES/FI/SE/TR/XN/XV)

https://www.wipo.int/export/sites/www/pct/en/fees.pdf

Further savings can be obtained on the international filing fee depending on the applicant nationality and residency.

Also, if you are short on money you can file the PCT and not pay the search fee to the ISA, the application is still valid to enter on the national stage.

https://www.wipo.int/pct/en/texts/articles/a17.html

(b)  The national law of any designated State may provide that,
where the national Office of that State finds the invitation, referred
to in subparagraph (a), of the International Searching Authority justified
and where the applicant has not paid all additional fees, those parts of 
the international application which consequently have not been searched 
shall, as far as effects in that State are concerned, be considered 
withdrawn **unless a special fee is paid by the applicant to the 
national Office of that State**.

I won't recommend you not to pay the search but to find an indian friend :-)

Further sources: https://www.neifeld.com/pubs/WhichROAndISAShouldYouSelectWhenFilingPCT.pdf

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    Both UK and US allow you to file directly ("pro se") using no agents or middle mans, but UK ask you for a local address located in UK, Gibraltar or the Channel Islands, you can obtain that with a provider or friend. In the US you don't need that but you need a longer process to have access to the private PAIR (notarize a form and send it to the USPTO by postal Mail) and pay $125 for the provisional patent. You could obtain a PO box in UK for free (for example ukpostbox) and only pay for the received letters (if any) (To be continued...) – YOGO Mar 2 at 11:34
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    So, if you are short on money go to UK first and don't pay anything. You will obtain a 12 months time (Paris Convention) to file in other countries or a PCT (you can file a PCT by yourself directly at WIPO.INT with no middlemen). But you can also file a PCT first and obtain those 12 months and another 18 (Total 30) to file in almost any country and taking in account that certain nationals get a discount of 90% when filing the PCT, you can end filing a PCT for only 150 USD (with search report included) saving tons of money. – YOGO Mar 2 at 11:45
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    By blood or not ( maybe except if you are stateless ) a national (only persons) of the first table can enjoy that 90% discount, a national can be living in another country of the said table but not in another country not present in that table. The second table includes Persons or Legal Entities (for example a company) from any of country listed in that second table will enjoy the discount. You are not required to have or show a passport when submitting your patent application to the international bureau, they assume your residency by the address you declared and the nationality declared – YOGO Mar 2 at 15:26
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    The process of submitting by yourself at Wipo.int is much easier than any office I had saw, there is no requirement of local address, agent, lawyer, submission of notarized document or waiting time, even the language can be one of many aceptable. You will need to provide the application in a language that is accepted by the ISA you choose. The reduction of the Fee applies to all except the ISA search fee, and in that case there are some ISA with fee reduction for natural persons, but the best is to reach the ISA that fit your current needs. – YOGO Mar 2 at 15:31
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    If you save money now (choosing for example India as ISA for the search report) when you enter on the national stage the offices most probably will be more suspicious of the quality of the search. If you choose the EP for as the ISA you will save money when you enter on the "regional" stage with EPO as you won't pay any search fee again. It depends on your factors and current situation, also the kind of invention and the way you draft the claims – YOGO Mar 2 at 15:41

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