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shannu
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Posts: 13
Prior art
« on: Oct 29th, 2007, 6:39am »
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Dear Friends:
 
Please send in your response to the following query:
 
Reference 1:
 
PCT Filed on December 05, 2003 (US designated)
 
PCT Published on June 16, 2005
 
Application Filed in US on June 05, 2006 [371 (c)] and published on July 26, 2007  
 
Reference 2:
 
US provisional on January 05, 2005 and non-provisional on January 05, 2006 (published on August 03, 2006)
 
Reference 1 discloses the subject matter which Reference 2 claims.
 
Will claims of ref 2 will be granted in the US as the subject matter already disclosed (PCT already published before the Non-provisional ref 2 filed)
 
Regards
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TataBoxInhibitor
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Posts: 456
Re: Prior art
« Reply #1 on: Oct 29th, 2007, 7:35am »
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a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351
(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application  
 
1.designated the United States and  
2. was published under Article 21(2) of such treaty in the English language
 
 
The publication has its own 102(a) date, but as such, does not predate your filing date, also, the filing date of the PCT, provided it meets the requirements would have the 102(e) date and anticipate because it was in 2003.
 
I would wait for other responses, as I wrote and read this pretty quickly.
 
Regards,
 
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DJoshEsq
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Posts: 104
Re: Prior art
« Reply #2 on: Oct 29th, 2007, 3:18pm »
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I agree with above.  You need to consult a professional but one strategy may be to file a continuation, claiming priority to "ref 1" and "ref 2" and then abandoning ref 2...assuming both are still pending
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D. Joshua Smith, Esq.
Registered Patent Attorney
McDonald Hopkins, LLC
Cleveland, OH
216-348-5400
shannu
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Posts: 13
Re: Prior art
« Reply #3 on: Oct 30th, 2007, 1:10am »
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Thanks a lot for your quick response.
 
Please correct me if I misunderstood your comments.
 
The subject matter of ref 2 will be anticipated over Ref 1, as ref 1 designated US and was published in english language (irrespective of PCT filed in the US or elsewhere). Thus the PCT publication of ref 1 will be a prior art for ref 2 in the united states. Please suggest.
 
Regards
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