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   PCT based on second application
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   Author  Topic: PCT based on second application  (Read 1096 times)
ljd
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PCT based on second application
« on: Nov 28th, 2007, 8:38pm »
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Dear specialists,
 
Here is the situation:
 
A patent application got filed in country “X” on a certain date.  
After 14 month before publishing the application of country “X” the same application was completely independent filed to country “Y” and received through checking novelty in country “Y” because the first application in country “X” was not published.
Based on the application to country “Y” before the expiry of the 1 year period, the same application was filed to PCT using the priority date of the country “Y” and got accepted by PCT as novelty (I assume because PCT made their search based on the filing date of the application to country “Y” = priority date of PCT).  
All applications where filled by the same person.  
 
Here is my question!
 
Is it possible to apply the same invention to other PCT countries based on the PCT application with the priority date of country “Y” application with the chance of success?
 
Is there any conflict between the first application of country “X” and the PCT application and nationalizing of the PCT application?
 
As I understand the case, there should be no problem because, at the time the application to country “Y” got filed the application of country “X” was not published.    
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DJoshEsq
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Re: PCT based on second application
« Reply #1 on: Nov 29th, 2007, 2:48pm »
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X will bar you in the US and likely in most other foreign countries.
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D. Joshua Smith, Esq.
Registered Patent Attorney
McDonald Hopkins, LLC
Cleveland, OH
216-348-5400
Isaac
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Re: PCT based on second application
« Reply #2 on: Nov 30th, 2007, 9:32am »
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on Nov 28th, 2007, 8:38pm, ljd wrote:
A patent application got filed in country “X” on a certain date.  
After 14 month before publishing the application of country “X” the same application was completely independent filed to country “Y” and received through checking novelty in country “Y” because the first application in country “X” was not published.

 
 
As I read the scenario, application X is prior art in the US as of its publication date and cannot be used under 102(e).  Further, because X and Y are filed in different countries, there is no restriction under US law against claiming foreign priority to application Y.  (obviously assuming that no other applications are filed in country Y)
 
Under those facts, X is not applicable against patent claims that get the benefit of the foreign priority claim to Y until the application in X either issues and raises a 102(d) problem, or until the application in country X becomes a 102(b) problem 1 year after publication.
 
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Isaac
DJoshEsq
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Re: PCT based on second application
« Reply #3 on: Nov 30th, 2007, 10:11am »
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sorry misread that.  Yep for 102(d) to apply App X must issue  prior to the filing date of App Y.  Again, you may have problems in other countries though.
« Last Edit: Nov 30th, 2007, 10:39am by DJoshEsq » IP Logged

D. Joshua Smith, Esq.
Registered Patent Attorney
McDonald Hopkins, LLC
Cleveland, OH
216-348-5400
ljd
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Posts: 2
Re: PCT based on second application
« Reply #4 on: Dec 2nd, 2007, 7:54pm »
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Thank you DJoshEsq,
Thank you Isaac,
 
how about it if the patent was first filed in a foreign country (X), than filed in a another foreign country (Y), and I want to apply now in US through the PCT application?
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