The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Nov 15th, 2019, 8:06am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
European Patents
(Moderators: Forum Admin, JimIvey, JSonnabend)
   My rights in Europe after filling PPA
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: My rights in Europe after filling PPA  (Read 2658 times)
ernest
Newbie
*




   


Posts: 1
My rights in Europe after filling PPA
« on: Feb 18th, 2007, 10:34am »
Quote Quote Modify Modify

Hello,
 
I am from Slovenia – Europe and I intend to fill for PPA in U.S. There is following paragraph in the book I am reading:
 
”If you publish, publicly use, sell or offer to sell your invention after filing a provisional patent application or regular patent application in the U.S., you can file for a foreign patent within 12 months of the filing date in countries that belong to the Paris Convention.”
 
For example, I fill for PPA and than publicly present and sell my invention all over the world, will I still be able to fill for a patent in Europe within one year after filling PPA? Even if I am not U.S. citizen?
 
Thank you in advance,
Ernest
IP Logged
Agent_Orange
Newbie
*




   


Posts: 16
Re: My rights in Europe after filling PPA
« Reply #1 on: Oct 27th, 2007, 2:06pm »
Quote Quote Modify Modify

Yes.
 
But, you have to file a utility application in the US first, and you have to use the filing date of the provisional as the priority date.
IP Logged
alconada
Newbie
*




   


Posts: 14
Re: My rights in Europe after filling PPA
« Reply #2 on: Oct 28th, 2007, 10:28am »
Quote Quote Modify Modify

I agree with Agent_orange, except for the need to file a utility application in the US. This is only necesary if you still want to get a patent in the US, because the PPA will never give rise to a patent.
 
In Europe, a notice of the President published in the Official Journal 1996, 81 considered that a US PPA gives rise to a priority date for a subsequent, regular national application for the invention which is filed within 12 months of the date of filing of the provisional application with a reference to the provisional application (35 USC section 119(e)).
 
Whether the President is entitled to decide which type of applications can serve the basis for claiming priority rights is at least doubtful, although this was never discussed before the Boards of Appeal.
 
Greetings
IP Logged
Agent_Orange
Newbie
*




   


Posts: 16
Re: My rights in Europe after filling PPA
« Reply #3 on: Oct 31st, 2007, 1:26pm »
Quote Quote Modify Modify

Greetings alconada.
 
Yeah, and as far as I know, only the nation for which the provisional is filed can determine whether that provisional serves as priority.  My understanding is that, even if a US utility was not desired, a US utility application would still need to be filed, in order to use the US PPA for its priority in the international stage.  Normally, of course, a US utility patent would in fact be desired.  So, the situation would rarely come up.
IP Logged
Isaac
Senior Member
****




   


Posts: 3472
Re: My rights in Europe after filling PPA
« Reply #4 on: Oct 31st, 2007, 4:42pm »
Quote Quote Modify Modify

Typically an applicant in the US would file a non-provisional in the US and would then pursue international rights.  But foreign filers (in Slovenia for example) might well elect to file a provisional application in the US and then proceed to using an international filing.   I would caution any foreign filer to be wary of any local laws requiring filing in his/her own country before filing abroad.
 
An advantage to proceeding as above  would be that filing a provisional would allow the later international filing to be prior art as of the provisional filing date very cheaply.  On the other hand, claiming foreign priority and then filing a US or international application based on that foreign priority not provide the prior art effect in the US based on the foreign filing date.  (See In re Hilmer).
 
Of course for such an applicant, a requirement to file a US national application prior to filing the international application would be a signficant barrier to using this strategy.   Fortunately, it generally isn't necessary to do this.
 
« Last Edit: Oct 31st, 2007, 4:43pm by Isaac » IP Logged

Isaac
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board