U.S. provisional application followed by a PCT application (in China, U.S. etc)

Question

Before investing into a regular national patents via PCT (in China, U.S. and other countries) I would like to test the commercial potential of my invention. To this end I might utilize U.S. provisional application in U.S., but there is no such thing in China.

1. But can I

• file a (cheap, self written) U.S. provisional application,
• start openly selling my product, for less then a year (even in China?),
• file a regular national patent application in China, U.S. and elsewhere within 12 month period?

Or is my selling considered public disclosure preventing me from a later regular patent application in China despite me filing a provisional application?

2. While I do plan to read the book "Patent Pending in 24 Hours" dating back to 2002-2004 - I'm aware that I will not turn a patent attorney based on that knowledge. I might formulate my provisional application either (a) too broad/general or (b) too specific (leaving out valid claims that a professional attorney would have added). What is the best approach here (in the light of future PCT national application in China and elsewhere)?

Answer 1

With skill on behalf of the applicant this can be done. It is the reason for the Paris Convention.

Under the Paris Convention for the Protection of Industrial Property a filing in any of the “Contracting States” is treated as filed in all other Contracting States. A quote from the official summary at WIPO

on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time (12 months for patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other Contracting States. These subsequent applications will be regarded as if they had been filed on the same day as the first application.

The Paris Convention became effective in China in 1985. The quote above might generate a question about a US provionak application being a “regular” application.

The definition of regular application is found in Article 4. A (3)

By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.

A U.S. provisional satisfys this criteria.

The challenge is to draft a comprehensive, well structured application that properly supports the claims you will later make in national and PCT applications. The provisional may have very little formal requirements but the substance of the document is what you will rely on later. You can’t go beyond its disclosure in claiming your scope of protection.