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rahulvartak
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Priority dates
« on: Sep 1st, 2004, 11:22am »
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Hi Everybody,
 
  I wish to clarify a few things about priority dates of PCT patent Applications.
 
I was wondering  whether national patents filed through a PCT route will all have the same priority date or the dates could be different.
 
For example, (XYZ) have filed a PCT patent on some day of some month in 2000 and after the international search report and after the Preliminary examination, he wishes to go for National Filings.
 
(XYZ)goes for National Patent in Brazil, Canada, EP, Mexico, South Africa etc.
 
So does (XYZ) get the same priority number and the same priority date for all the Patent Applications as 2000(month)_(day).Or could he expect some difference in the priority date?
 
Any exceptions as per the country law(Particularly South Africa)?  
 
Any comments are welcome.  
 
 
Rahul Vartak
 
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JimIvey
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Re: Priority dates
« Reply #1 on: Sep 1st, 2004, 11:28am »
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While I don't have the exact rule in front of me, I believe the answer is that they will all have the same priority date -- assuming that all are members of the PCT.
 
I don't know what a priority number is, so I can't answer that part.
 
I don't know much about the specific patent laws of South Africa.  
 
I hope my partial answer is helpful.
 
Regards.
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rahulvartak
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Re: Priority dates
« Reply #2 on: Sep 2nd, 2004, 12:17am »
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Hi Jim.
 
Thanks for the information.It has definatel been helpful clearing the general concept about PCT priority dates.
It is very much in accordance with my views.
 
I was wondering whether anyone has any idea about the laws in south Africa. Is it mandatory for the south African Patent filed through PCT to have the same priority date or it could have a different Date.
 
In case The ZA Patent has the same title ,  same inventors , same applicants but does have a diferent priority date, would it be considered as a new Application?
 
Regards,
 
Rahul Vartak.
 
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eric stasik
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Re: Priority dates
« Reply #3 on: Sep 2nd, 2004, 1:51am »
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on Sep 2nd, 2004, 12:17am, rahulvartak wrote:
Hi Jim.
 
Thanks for the information.It has definatel been helpful clearing the general concept about PCT priority dates.
It is very much in accordance with my views.
 
I was wondering whether anyone has any idea about the laws in south Africa. Is it mandatory for the south African Patent filed through PCT to have the same priority date or it could have a different Date.
 
In case The ZA Patent has the same title ,  same inventors , same applicants but does have a diferent priority date, would it be considered as a new Application?
 
Regards,
 
Rahul Vartak.
 

 
Mr. Vartak,
 
This can get a little confusing. Priority derives from the Paris Convention. The PCT, or Patent Cooperation Treaty, is an administrative procedure for claiming the priority afforded by the Paris Convention.  
 
Let's say that I want to file a patent in the Republic of China claiming priority to a US application. Taiwan is not a member of the PCT (although the other China is) but it is a member of the Paris Convention. If I want to obtain a patent in the Republic of China claiming priority to the US application, I have to file a national application in Taiwan within the priority year afforded by the Paris Convention and claim priority to the US application.  
 
If I wanted to obtain a patent on the same invention in the People's Republic of China, I could either file a national application with SIPO (again within the priority year) or I could file a PCT application with the USPTO designating the PRC. The PCT application preserves the priority date even though it may be years before a national application is registered in the PRC.  
 
It is not mandatory as far as I know that once a PCT application is filed that you MUST enter the national stage through the PCT, but if you don't you will not be able to claim the priority date of the PCT application.  
 
Say for example, that I file a PCT application designating ZA (South Africa), but after so doing I decide that I need to get a patent issued more quickly so I go ahead and file a national application directly in South Africa. If this is done within the prioroty year, then both the PCT route and the national route would result in a same patent with the same priority date. (I would then abandon the PCT application for ZA.)  
 
But what if the priority year has passed? I can't file a PCT application, but - If the appliction has not been published, or otherwise made public - I can still file a national application in South Africa, but I cannot claim the earlier filing date.  
 
Thus, I will have an identical patent as one issued in another country, but with a different filing/priority date. It happens all the time.  
 
I hope I have this right. The PCT is unforgiving and I am not an expert on all of the complexities so I encourage you to seek the advice of a qualified attorney with whom you can share the details of your case.  
 
Hope this helps,
 
eric stasik
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
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JimIvey
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Re: Priority dates
« Reply #4 on: Sep 2nd, 2004, 10:06am »
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on Sep 2nd, 2004, 12:17am, rahulvartak wrote:
In case The ZA Patent has the same title ,  same inventors , same applicants but does have a diferent priority date, would it be considered as a new Application?

 
I think Mr. Stasik gave you a fairly complete answer.  I'll just emphasize that the only way that I can think of to have a different priority date in the ZA application relative to an earlier PCT application is to not explicitly link the two.  In that situation, it would be a different application.
 
In general, national applications based on PCT applications include some explicit linking between the two.  So, whether the two applications share the same priority date should be rather clear on the face of the relevant documents.
 
Regards.
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