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   Urgent: can I still file PCT?
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kl9000
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Urgent: can I still file PCT?
« on: Sep 26th, 2007, 11:35pm »
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Here is my situation:  
- I filed a US PPA on June 2006.  
- I filed a US RPA on June 2007.  
- I got a foreign patent licensing granted date of July 10th 2007.  
- On my RPA, I claimed priority to my PPA.
- On my RPA, I have some new matters compare to my PPA.
- I am trying to file my PCT now. So technically I am past the one year of my first application (PPA on June 2006).  
 
 
1. Can I still file a PCT?
2. What date can I claim for my PCT application: June 2007? June 2006? Now?  
3. I remember reading that the PCT now we can still file if the 12 months was missed intentionally.
 
Thank you.
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PeterG
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Posts: 7
Re: Urgent: can I still file PCT?
« Reply #1 on: Sep 27th, 2007, 8:47am »
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I am trying to answer your questions.    
 
1. You can of course file a PCT application.
 
2. I think you can just claim priority to your RPA which was filed June 2007.
 
3. Even though the new PCT regulations allows the applicant to claim the priority to an earlier application which was filed more than 12 months ago, I don't think it is meaningful because most of foreign countries would not accept the priority claimed as such.
 
Best regards,
 
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Peter Guo
Chinese Patent Attorney
Nanjng Law Firm of Intellectual Property
www.cnip.cn
alconada
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Posts: 14
Re: Urgent: can I still file PCT?
« Reply #2 on: Sep 27th, 2007, 2:39pm »
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I think that everything depends on whether the different national and regional offices recognise PPA as valid priority document. As far as I know, the priority is not checked during the PCT stage. Only the ISA needs to cite prior art published betwen prio and filing date. The examination of the validity of the prio claim and hence of the relevance of intervening prior at is left to the national/regional offices.  
 
If you file a PCT claiming priority of the RPA, when the application enters the national phases there will be two situations:
 
1- Patent offices which accept the PPA as priority document (e.g., EPO): the priority claim will not be valid because the PPA will be considered as the first application and thus, your application will not claim priority of the first aplication as required by the Paris Convention. Thus, you will lose your priority right, which should not be a problem if you have not disclosed the invention anywhere.
 
2. Patent offices which do not accept the PPA as priority: For those offices, the PPA is a non-existing document so that your priority claim from June 2007 will be valid as there is no prior application for the same subject-matter.
 
Therefore:
 
1.- Yes
2.- Claim priority from June 2007 and hope that the invention was not disclosed in the previous year as this will be prior art in those countries accepting the PPA as valid prio doc.
3.- The remedy for late claiming a priority right is only after 14 months of the intended date, so it is now too late for that.
 
Regards
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da18102000
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Posts: 4
Re: Urgent: can I still file PCT?
« Reply #3 on: Oct 1st, 2007, 11:18pm »
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Ok, I will then file PCT.
 
Question (a) Since I will choose the June 2007 date to claim as priority (RPA), can I simply wait 12 months , June 2008 to send PCT application?
 
Question (b) I did not publish my invention from June 2006 to June 2007. However, I have a website from Oct 2006. It does not have much details of the invention on it. Could it be a problem and make my whole PCT application irrelevant?
 
Question (c) how much is the total PCT cost? From the USPTO website. It would be total ~ $1500, correct?
- transmittal fee = $300
- PCT search fee = $300
- international filinf fee with PCT = $931
 
Question (d) at what date would I need to file in each selected country: 30 months from June 2006 or 30 months from June 2007?
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alconada
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Posts: 14
Re: Urgent: can I still file PCT?
« Reply #4 on: Oct 3rd, 2007, 1:16pm »
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(a) Yes, you can wait up to 12 months and still have a valid prio claim.
 
(b) The information on the web site is probably not anticipating your invention because it lacks details but it might render it obvious by itself (if only trivial details are missing) or in combination with some other piece of prior art published until June 2007.
 
(c) transmittal fee: 300 USD
International filing fee: 1086 + 12 USD per sheet in excess of 30 (reductions available for electronic filing)
International search fee: 300
 
(d) the 30 months are counted as from the earliest priority date. I am not really sure but I would say that the 30 months would be calculated from June 2007.
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