If I file a provisional patent application, could someone else file a PCT application for the same invention during the first 12 months?

Question

I'm working in a startup with a limited amount of investment. We'd like to file for a US provisional patent. My understanding is that after 12 months, I can upgrade to a PCT application.

For this specific invention, I believe that most of my market is outside of the USA. That being said, I'd like to file in the USA first because we're based in Canada, it's cheaper, it buys us 12 months, and it can be upgraded to a PCT later buying us even more time.

My question is: if I file a provisional patent application in the USA, what's stopping someone from scooping it up and going international before I'm able to file a PCT? If so, in the first 12 months should I avoid doing international business? Or, should I skip the US patent altogether, knowing our market is international?

Answer 1

As soon as your product is on the market a competitor could start the process of copying it, making it and selling it. Since you will file some application somewhere before you let it out to the public, you can and should mark the product or packaging "Patent Pending". That may slow down a copier who thinks why gear up to copy you if it is highly likely that a patent will issue and they will need to stop then. Or, if it is a huge hit and the start-up/tooling costs are low, they may just go for it.

If this happens you can file the PCT without waiting the year to speed things up. Without an issued patent in whatever country they are selling into you can't stop them. Presuming you do follow up with a PCT or a non-provisional patent application, your patent application will most likely be published by a patent office 18 months from the earliest priority date.

Anyone who files after you will/should not get a patent because their thing is old at the time it was filed. Of course the more time you "buy" the longer until it is very findable by a patent examiner.

Also, if information about your product itself is very findable by a patent examiner, the bad guy would/should not get a patent independent of the state of your patenting activities. Their application will be dated after you shipped and therefore will not be new.

Answer 2

My question is: if I file a provisional patent application in the USA, what's stopping someone from scooping it up and going international before I'm able to file a PCT? If so, in the first 12 months should I avoid doing international business? Or, should I skip the US patent altogether, knowing our market is international?

A prov is not a traditional patent Application, it is meant to file a disclosure and lock in a priority date. The provisional application is not published unless you claim priority from the provisional. If you do claim priority, the provisional application becomes open to public inspection (but will not have a publication number like patent applications and issued patents have), and all applications claiming priority from this provisional application are published 18 months after the filing date (that is, the priority date) of the provisional.

Filing a PCT is NOT an "upgrade". It is filing of an Application, albeit one where a patent is not granted, and cannot be enforced. To get a patent following a PCT application, you then have to enter National Phase in each country you want a patent/protection in, which has to be done within 30 months from the priority date for most countries, 24 for a handful.

A PCT (or a patent application in any country) has to be filed within 12 months of the priority date (filing of provisional), beyond which you lose the right to that priority date. That is, your filing date becomes the priority date of the PCT or any other patent application if you miss the opportunity to file within the 12 month window after filing the provisional.