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(Message started by: ester on Apr 5th, 2007, 7:00pm)

Title: Problems with foreign filing
Post by ester on Apr 5th, 2007, 7:00pm
I filed a US application a while ago.   Is it true that I have one year to file abroad or my own application will be used against me?   If not, what deadlines do I need to worry about if I want to file abroad?  

Is 102b a problem only when the application is published and/or issued, then a year from that date would bar me?

I am just worried about my own application becoming prior art against me.

Title: Re: Problems with foreign filing
Post by TataBoxInhibitor on Apr 5th, 2007, 8:16pm
The Paris convention requires that you file the PCT application within a year to claim priority to your US application.  You are correct, when your US application publishes, that publication can be used against you in trying to obtain foreign protection.  I am not entirely up on PCT, there will be others here that may or may not correct me.

Title: Re: Problems with foreign filing
Post by Isaac on Apr 6th, 2007, 7:44am

on 04/05/07 at 19:00:32, ester wrote:
I filed a US application a while ago.   Is it true that I have one year to file abroad or my own application will be used against me?   If not, what deadlines do I need to worry about if I want to file abroad?  

Is 102b a problem only when the application is published and/or issued, then a year from that date would bar me?


102(b) is for the most part a US issue.  In most countries (perhaps excluding Canada) there is no "grace period" and an inventor's own disclosures are usable against the inventor immediately upon publication.    If you cannot claim the priority date of your US application, then in most foreign countries you out of luck after the US application publishes.

Title: Re: Problems with foreign filing
Post by ester on Jun 12th, 2007, 11:57am
What is the time range for claiming "priority" to my US application from the PCT?

Title: Re: Problems with foreign filing
Post by JimIvey on Jun 12th, 2007, 8:29pm
Same answer: one year.

Regards.

Title: Re: Problems with foreign filing
Post by ester on Jun 15th, 2007, 4:13pm

on 06/12/07 at 20:29:03, JimIvey wrote:
Same answer: one year.

Regards.



What if my Non-provisional claims priority to a provisional, do I have a year from the filing date from my non-provisional to file a PCT?

thank you jim!

Title: Re: Problems with foreign filing
Post by manoj pandey on Jun 17th, 2007, 7:09am
No, Its one year from your earliest filing irrespective of provisional/Non-provisional.

Title: Re: Problems with foreign filing
Post by ThinkPatent on Jun 17th, 2007, 10:38pm
Almost all member countries to the Paris Convention adhere to one year ‘grace period’ as per Article 4 (C)(1) of the Paris Convention where the ‘grace period’ being measured from the date of filing of the first patent application (that is earliest priority date) for the invention in a member country. Anyhow if you fail to file an equivalent foreign application within the stipulated grace period of one year then you would not be allowed to carry forward your priority benefit in foreign countries which means that your own application (whenever published) will be considered as a prior art reference for your foreign application.

Just in case I personally feel it is better to claim priority from non-provisional patent application because in any case provisional application will never be published by the Patent Office. But you need to cross-check that because anyhow while filing non-provisional patent application you would most probably claim priority from provisional application, so I am not sure whether it is statutory mandatory that if your non-provisional application claims priority from provisional application then while filing foreign application is it necessary to claim priority from provisional application rather than non-provisional application!



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