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[patatty30]

I know that there is 1 year from the earliest priority date (whether that be a US prov., US nonprov. w/out prov., or a foreign app.) in which to file a PCT application.

My question is after you file a PCT what are your options for expanding that initial PCT application.  I understand US options but I'm concerned about international and foreign options.  Specifically:

1) If the 1st PCT is the 1st application in its chain (doesn't claim priority to anything) could you file a 2nd PCT application within 1 year from 1st PCT and claim priority to 1st PCT in 2nd PCT?

2) If the 1st PCT is not the 1st application in its chain (say it claims priority to a US nonprovisional w/out corresponding provisional) could you flie a 2nd PCT application within 1 year from 1st PCT and claim priority to 1st PCT with respect to material in 2nd PCT and 1st PCT that was not also in US nonprov.? 
(This would be based on the reasoning that earliest priority date for the material in the 1st PCT and not in US nonprov. is really just the filing date of the 1st PCT so 2nd PCT is within 1 year of that.)

I've read that you can file a PCT that claims priority to a US CIP with respect to the new matter (new from the earlier apps to which CIP itself claims priority) if filed within 1 yr of CIP. 
Where I read this:
http://www.intelproplaw.com/ip_forum/index.php?topic=8413.0
http://www.intelproplaw.com/ip_forum/index.php?topic=7701.0
I think the above situation in #2 is analogous except instead of the US CIP as the middle app. we are dealing with a 1st PCT. 
Is this correct?  Does it extend to #2 such that PCT2 can claim priority to a PCT1 acting like a CIP?

However, at 1st glance I thought this conflicts with what I have heard about the reason you cannot file a PCT more than 1 year after the earliest application in a chain.  I have heard if the earliest application is pending at the time the middle application is filed and the PCT is filed beyond 1 year from the earliest application it cannot claim priority to the middle application.  Maybe this was just a generalization without taking into account new matter and separate priority dates for different parts of an application?
Where I read this:
http://www.intelproplaw.com/ip_forum/index.php?action=printpage;topic=10480.0

Any clarification or confirmation would be greatly appreciated.  After just re-reading the sites I cited it looks like priority claims in a PCT to applications other than the 1st app. in a chain are okay but only with respect to subject matter first appearing not more than 1 yr before PCT filing date ("new matter" w/ respect to 1st app. in chain).
Right?

Thank You so much for your time!

[e93]

1) Yes, you can file a 2nd PCT claiming priority from the 1st PCT, as long as the 2nd PCT is filed within one year of the filing date of the 1st PCT.

2) Summary of the situation:
US1: filing date D1, non-provisional
PCT1: filing date D2, claiming priority from US1
PCT2: filing date D3

PCT2 can claim priority from either or both of US1 and PCT1, under the assumption that it is done within one year of respective filing date, i.e. D1, D2 respectively.

The problem arises if D3 - D1 > 1 year. PCT2 can then not claim priority from US1, but if D3 - D2 < 1 year, priority can be claimed from PCT1. However, the priority is only valid for subject matter in PCT1 which was NOT in US1. In other words, subject matter in US1 can be subject of priority only within one year of D1, regardless if the middle application PCT1 is present or not.

By the way, the priority situation is the same if US1 is a provisional application.

European patent attorney

[patatty30]

Thank You.  That is very helpful to me and I received the same advice from a colleague who is also a European Attorney.
Would the same logic apply if the US nonprov. had claimed priority to a provisional but the nonprov. contained some
new matter not in the provisional.  Could a PCT filed more than 1 yr after provisional but within 1 yr of nonprov. claim
priority to the nonprov. with respect to the new matter 1st appearing in the nonprov.?

1)  US provisional on D1
2)  US nonprovisional on D2 (D2-D1 < 1 yr) w/ priority claim to D1
3)  PCT on D3 (D3-D2 < 1 yr) but (D3-D1 > 1 yr) w/ priority claim to D2 only

Is this okay?
Can the other material from provisional be included in PCT without a priority claim assuming the nonprovisional (including
some material from the provisional) has not published yet?

Thank You any feedback would be greatly appreciated.

a point of reference:

I am not sure how subject matter or "same subject" would be interpreted (at the national stages) and I am trying to reconcile Paris Convention Article 4(C)(4) (refers to "same subject") with Article 4(F) (refers to "elements").
http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P83_6610
It seems if under 4(F) the nonprovisional contains "elements" not in the provisional then it would give rise to a
right of priority itself.

Article 4(C)(4):

(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

Article 4(F):

No country of the Union may refuse a priority or a patent application on the ground that the applicant claims multiple priorities, even if they originate in different countries, or on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed, provided that, in both cases, there is unity of invention within the meaning of the law of the country.

With respect to the elements not included in the application or applications whose priority is claimed, the filing of the subsequent application shall give rise to a right of priority under ordinary conditions.