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[OnMyWayNOW]

Hi Ladies & Gents,

Haven't been here for some time. But now that I seem to be in a pickle I need to ask a few questions for advice.

I filed a US provisional in March '10, replaced it timely w/ RPA in March '11.   
At March US RPA filing, it wasn't indicated to file PCT w/in that 12 month priority-preserving period for PCT for international protection (thought the invention would only be viable RPAin the US). Here, and now after 16 months of filing provisional/4 months after the RPA (claiming priority from the provisional)...we've unexpected European and Asian demand for the product. Thus I must file PCT and internationally.  Am tempted to file claiming priority on my March '11 RPA & hope its not noticed, therewithin I claimed priority to provisional. Am I'm "stuck"...no priority available whatsoever because of the provisional 16 months ago? Must I claim no priority thereto, because they will "bounce" my application if I do so claim? If I only claim priority to my March '11 RPA, can I get "in trouble"? If so, what trouble or sanction would apply? Why CAN'T I claim March '11 priority?

sincerely,
Dave

[JimIvey]

Am I'm "stuck"...no priority available whatsoever because of the provisional 16 months ago?

Yes, you're stuck.

Must I claim no priority thereto, because they will "bounce" my application if I do so claim? If I only claim priority to my March '11 RPA, can I get "in trouble"? If so, what trouble or sanction would apply?

The claim of priority of the March '11 application would be clearly and easily identifiable as improper.  If the PCT and other national patent offices don't catch it, any defendants against which you would assert patent rights would immediately identify the problem.

Why CAN'T I claim March '11 priority?

The Paris Convention only allows priority to be claimed within 12 months of the first application filed anywhere in the world for the invention.  The provisional is that first application.

FWIW, this is a common mistake for inexperienced people relying on provisional applications -- they often don't realize that the real US application and all foreign application are due at the same time.  Some mistakenly believe they have another year to file foreign applications.  Other simply don't contact a professional until it's too late to file a real application in the US and in the rest of the world and they weren't aware of the deadline for foreign applications.

Regards.

[bartmans]

Jim,
your answer is correct and should be a warning for all that file US provisional as their first (priority) application.

If I only claim priority to my March '11 RPA, can I get "in trouble"? If so, what trouble or sanction would apply?

You can file the claim to priority, but it will be worthless as explained by Jim. However, there is no sanction. The only thing you should keep inmind is that, although the priority claim will be published on the front page of your application, you will be only entitled to the PCT filing date for assessing novelty and inventive step.

Regards.

[OnMyWayNOW]

To JimIvey, Bartmans, and all:

I very much appreciate the answers I expected to receive.  Thank you!

Admitting my inadequate experience in PCT matters (since I'm stuck, QED),  notwithstanding on US matters, I'm considered fairly competent (by experienced patent attorneys because of the 10+ US patents I've been issued pro se).

Biggest challenge I have is being an impecunious garage inventor...buying help from experienced registered patent attorneys is top of my list once I get the adequate funding and/or sales I need, to pay them with.

That said, is there no way out of this stuck situation my lack of adequate PCT experience has gotten me in?

best,
me

[OnMyWayNOW]

I suppose I could amend the still-pending March '11 RPA by deleting the claim to priority to the March '10 provisional.   I realize that's "reaching" for a last resort, if I felt that the US commercial viability was dwarfed by the external commercial viability.  Do please continue to bear with us newbies and our "brainstorms", we all were newbies once.  OTOH, it appears statistically that the prospective US share of worldwide sales of most products, ranges from 1/2 to 2/3 of the worldwide gross sales... so I may have gotten "stuck" for non-US filings based on naivety, but if the product is half as good as I think it is, what I may lose internationally may only comprise 1/2 to 1/3 of total gross sales worldwide IFF my innovation was filed on internationally, prior to (what will be) my effective international filing date (a filing date to be today or tomorrow). Thanks again, friends.

best,
senior newbie

[JimIvey]

I suppose I could amend the still-pending March '11 RPA by deleting the claim to priority to the March '10 provisional.   

That might work, but it's not immediately clear to me -- at least without researching the issue further.

You can get rid of a "first" application by killing it off, but you have to kill it off completely.  The mere fact that you already claimed priority might make that impossible.  In addition, if you can later re-claim priority, deleting it now would be ineffective.  I usually try hard to get priority correct to begin with, so I don't have much experience with fixing priority after filing.

Lastly, I'll offer my typical pro se advice to you:  forget about provisional applications.  They're created as a very special exception and ought to be used accordingly -- i.e., to take advantage of a very specific quirk of US patent law. 

It seems that all pro se applicants believe that all patents should start out as provisional applications.  It's quite the opposite.  Provisional applications ought to be reserved for those who properly understand them.  Many seem to think that provisional applications are a great help to pro se applicants.  I see provisional applications as cheese in a mouse trap.  The Patent Office will give you a filing date and won't tell you that the date is unavailable for any meaningful claims until it's far too late to do anything about it.

Regards.

[bartmans]

The mere fact that you already claimed priority might make that impossible.

Indeed it does: it at least leaves a trail, which would show that your RPA is not 'the first' application.

Nevertheless, it would still be possible to file a PCT without claiming priority. The only problem is that there should have been no disclosure (or sale) of your invention before filing. If that would be the case, indeed, you are stuck.

Further, to add to Jim's warning about provisionals: one other thing that is very often overlooked is that filing of the provisional will trigger the one-year clock for claiming priority for 'non-US (or PCT) applications. Many people face the same situation as is described here, or even worse, they think that it would be possible to file PCT one year after filing the non-provisional (which then probably will have been published, thereby causing a real prior art blockade).

Regards.

[bartmans]

Upon leaving this forum, I checked one of the blogs on case law of the Boards of Appeal of the European Patent Office and found the description of a case in which claiming priority from 'the first' aplication was discussed: http://k-slaw.blogspot.com/2011/07/t-32409-first-or-not.html.
From this case it can be learnt that there may be some (unintentional) escape possible if the subject maater for which priority is claimed has been altered in the meantime.
Although the case is very specific, I mention it here to illustrate two things:
a) it is an example where it is made clear that for addressing whether a priority claim is valid or not, the novelty test is used: when the claimed subject matter in the later application can be deemed novel over the subject matter in the priority document, the priority claim is invalid.
b) leave drafting and amending applications to professionals. They (should) know how knitpicky the Examiners and Boards can be.

Regards.

[OnMyWayNOW]

Hi again, all.

Well, I just sucked it up and filed PCT without asking any priority.
Hopefully the innovation will be great enough that I will not find intervening superseding innovations to make me rue the day I was born.

That said, thanks again to all for the sobering school call experience.

Maybe I will be lucky this time and I will never make the same miscalculation again.

best,
senior newbie