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[VirtualSushi]

Hello all:

Here is today's dilemma:

-US Utility claims priority to US Provisional.
-PCT claims priority to US Utility but not to US Provisional (applicant changed their mind too late)
-PCT was filed before publication of US Utility but US Provisional was cited in US Utility's publication.

I understand this presents a problem at national phase because the PCT will be considered the same subject matter (Paris Convention) as US Provisional, which is claimed in US Utility.  It also seems that in general the approach to overcome this problem is to remove the priority to US Provisional in US Utility.

Is there a problem that the US Utility published with the priority claim even if it is removed later?  I don't think this is a problem but would love to know if this has come up for anyone.

Thanks,

Ray

[George White]

I may not being seeing the whole picture but I think the problem is bigger than that. If the US prov. was the first filed on the same subject matter it is the only thing you can get priority from (under Paris) for the PCT.

--George

[dbmax]

Is there a problem that the US Utility published with the priority claim even if it is removed later? 

Presuming the provisinal is past its anniversary, here's my unprofessional reading of Article 4(c):

The priority benefit in the PCT app can extend only to new "subject" matter in the US nonprov. It will not extend to any  matter previously disclosed in the provisional under any circumstances. So it seems pointless to remove the priority claim from the US nonprov.

I'd be curious to hear alternative readings.

db



 

[bartmans]

Dbmax is corect:
Assume the provisional covered subject matter X, and the US utility covered X and Y. The PCT, claiming priority from the US utility can only claim priority for Y.

This thus only means that for subject matter X you can not claim priority, which means that the critical date for assessing novelty/inventive step for subject matter X will be the PCT filing date. If, by canhce, the US utility was published before the PCT filing date, you are out of luck (except may be for those countries that recognize a grace period like Australia and/or Japan). If there was no publication of X in the mean time, you would still be OK with the PCT application.

Regards.

[VirtualSushi]

I've heard that in European countries if a US nonprovisional claims priority to a US provisional the US provisional is treated as if it includes all of the same subject matter from the US nonprovisional.  In other words, the US nonprovisional is in essence treated as a continuation. 

I don't know it this is true.

Ray

[bartmans]

Not true.

We're talking about priorities here, which means you have either to follow the provisions of the paris convention or the provisions of the European patent Convention. In both occurences the specific situation discussed here will be treated as dbmax has explained.

regards.