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File your patent applications in the US first

Despite recent changes to US patent law, further harmonizing it with European law, there remain compelling reasons for filing patent applications first in the US. Given that our firm can file first in the USA, Europe, before the PCT authorities and in Switzerland (i.e., we’re free to choose among several jurisdictions for the first filing and so choose what we think is in our client’s best interests and not merely our own), we can I think provide objective reasons why it makes sense to do so. Here are a few:

1.By filing a US provisional patent application in the US first, we preserve all your options, including preserving your right to retain a claim of trade secret in your IP. This is because unlike Europe, Switzerland, and essentially ALL other countries and regions, there is NO automatic publication of US provisional applications at 18 months. In fact, US provisional applications are NEVER published. So, if we file in the US, and you decide you don’t want to risk disclosing trade secret information to competitors, then we need do nothing as the application will go abandoned without publication, automatically. Also, if you decide you wish to reserve your trade secret rights and still file a patent application, the USA IS THE ONLY PLACE you can file and still keep your application from publishing until you want it to publish (say, after commercially significant claims have been granted).
2.We gain time, because of the time difference, we have until about 6AM in the morning (and in some cases 9AM), to get a filing date of yesterday, which gives us more time to prepare a thorough application and get a filing date for you the day you send us the disclosure, when the case is urgent. This is because we’re licensed to file patent applications in Hawaii, in a time zone 12 hours earlier than Swiss time. Also, online filing is based on Eastern Standard Time, which is 6 hours earlier than Swiss time.
3.We can file applications in the US IN ANY LANGUAGE WHATEVER and need only translate a year after filing.
4.The online filing system in the US is EXTREMELY DEPENDABLE and the filing fees are lower than elsewhere.

There are of course other reasons, but they are less important.

OF COURSE, if you only want to protect your invention in Europe, or Switzerland, AND YOU KNOW FOR SURE AT THE TIME OF FILING THE APPLICATION that it only makes sense to file in Europe or Switzerland (which is almost NEVER the case), then it makes sense to file locally. But this tactic is not for globally oriented firms.

NOTE that the opposite is true for TRADEMARKS! In other words, you should almost always file your trademarks first in your home country or where you have a commercial establishment, to fully benefit from all the international conventions.

So, in sum, the general rule is: FILE YOUR PATENT APPLICATIONS IN THE US FIRST, AND YOUR TRADEMARK APPLICATIONS IN YOUR HOME COUNTRY FIRST. If you do, you’re positioning yourselves to maximize the options you have to protect your IP throughout the world.

Let us know what questions you might have.

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