A question regarding patents

Aug 22, 2009
Pittsburgh,PA U.S.A.
Many many years ago I purchased a software package that was in CD disk form called patent ease. It was written for a much earlier version of Windows but it runs on Windows 10. I hope it will run on 11 if I ever get a computer with that but that's one of the reasons I'm leery about purchasing a computer with 11. As TurboTax is to doing your own taxes the patent ease software is to doing your own patents. I've written a patent once with it and actually submitted it and then abandoned that patent before going through with it. But now I have another device that I invented that is in the field of an automotive tool. I have written a provisional patent that is very close to a actual final patent also. My understanding is that if you submit a provisional patent you have 18 months after that that you can apply for the PCT search for a worldwide search. And that if you want protection of your invention in other countries you have to apply for a patent and those other countries most of them within 12 months of applying for your provisional. So really you'd be doing the PCT search before the 12 months.

The only other countries that I would be interested in applying for patent protection in would be those that have a big enough market to make it worthwhile.

However, it is my understanding that there are some countries that if you apply for a provisional and then allow your device to become public knowledge such as marketing it and including the phrase patent pending, that you may no longer be eligible to apply for patents in some countries that you have not already applied for a patent for. In other words, as far as I understand it in the United States if I have a provisional patent already filed then I can allow the device to become public knowledge and still file for a Utility Patent and or a design patent within the 12-months after I file the provisional. However, I could even be wrong about this and it may be that I would lose ability to file for a full utility and or design patent if I had allowed the device to become public knowledge after filing a provisional. This is the area that I need more information about?

I could file the provisional and then soon after file a full utility and a design in the United States and only then allow the device to be brought to market even though it would take a long time after filing the utility and the design before it would actually go through with those. But it would be financially hard to apply for utility and or design in all the other countries without the device generating income.

So, is there anyone out there who knows what countries I would lose the ability to file full utility and or design patent in during the time after I had filed a provisional in the United States and before 12 months are over with after that if I had already then started marketing the device after filing the provisional. My concern is I want to find out if there are countries with significant market size that I would lose the ability to file a patent in if I don't file a patent in them before allowing the device to become public knowledge? The countries that I'm interested in are the ones with very large populations of vehicles. Such as obviously the United States which I'll have that covered anyhow from what I understand, and then Canada, Mexico, India, Germany, France, Italy, the United Kingdom, Spain, South Korea, Australia, Argentina, and Columbia seem to be the major countries that would have a large enough market to be worth pursuing for an automotive tool product.

Also, question is, are the Philippines considered a country I would not have to file an additional patent in, and would a patent that is filed in the United States apply to the Philippines?

I know that the patent laws have changed over the years so that now the United States also is like the rest of the world in that its first to file instead of first to invent. I talked to someone at the patent office and asked if a patent written as they were written 30 years ago would still be an appropriate format to be used for submitting a patent today and they said yes it would still be an appropriate format. So a concern I had that the software that I'm using to generate the patent May no longer be usable seems to be something that I really don't have to worry about.

Thanks in advance for any information regarding what countries that I may lose access to filing a full utility or design patent in if I have allowed the device to become public knowledge after filing a provisional in the United States.
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By the way, I actually have one patent already that I used a patent attorney for back in 1987. And one of the companies that I worked for patented something that I invented for them but I don't think my name is actually on that patent.
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Also, I have audio discs the teach the fine points of the wording of writing a patent that are very helpful in knowing how to structure the words for the different pages that I had to enter in the patent ease software, so that the patent that it ends up generating has each section properly structured
I don’t think you can get this fully answered without a consultation from a patent attorney with expertise in international patent law. Also I’m pretty sure your name must be on any patent you worked on in the past. IIRC, all disclosed individuals’ names must be on the patent.

The EU unified patent law, so I’d focus on US, EU, and Commonwealth first.