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[Ahmad]

Hello ,
I have an inquiry regards filing a patent application in Europe ,
the application was filed in US as provisional application in February 2008 and then converted to non-provisional application in February 2009 , can I file it in Europe in April 2009 ?
what are the risks for lack of novelty in Europe according to article 54?

[UVAgal4]

"You need to file for patents in foreign countries within a year of filing a US Patent Application, if you want to use the filing date of the US application as the effective ("priority") filing date in the foreign countries. This can be very important, since most foreign countries do not permit any sale or publication before filing for a patent. In the past, many applicants used this year to test the waters and see how the USPTO was going to respond before committing to the enormous cost of filing in other countries.

The Provisional Application starts the 1-year period for foreign filing, if you are going to use the earlier Provisional filing date as your "Priority Date" for the foreign application(s).

Thus, if you are planning to file in foreign countries, you'll need to file both the US and foreign (or PCT) applications before the end of the year from your Provisional Application filing date. As a practical matter, this usually means filing them at the same time, which could be a very large expense which would otherwise be spread over a year.

This could mean that most of the one year grace period most applicants rely on before deciding where to file could be used up before the formal application is prepared and filed. Of course, you could always use the later filing date of the formal application as your priority date, unless there's a publication or the like which will make this impossible."
from www.bpmlegal.com


Article 87(1) EPC defines the priority right system under the EPC or more precisely recognise priority rights for first filings in or for States party to the Paris Convention or any Member of the World Trade Organization (WTO): [7]

Any person who has duly filed, in or for
(a) any State party to the Paris Convention for the Protection of Industrial Property or
(b) any Member of the World Trade Organization,
an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application.

For article 54 (novelty)
anything that has been published before the priority date can be used against the novelty of the application. There is no grace period, unlike in the US.

[Ahmad]

Thank you very much ,
I think the implementation of article 54.3 of EPC is for unpublished European application only which means we can file non provisional US application which was not published yet.
I think the best solution for all these confusions is to harmonize all patent laws around the world