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[fb]

Talked with a licensing person yesterday who may not have been clear on priority timelines, so I wanted to clarify that this timeline is correct and will work towards the goal of foreign licensing (say, China).

1. File U.S. NPA
2. Publish (online).
3. File PCT within one year of NPA, claiming priority to NPA.
4. Try to get Chinese licensee to pay for Chinese IP prosecution before PCT time runs out. This prosecution would claim priority to the US NPA vis a vis the PCT.

Main concern is that the publishing will not bar the Chinese application.

[JimIvey]

Are you planning to request early publication?  Publication is normally at about 18 months while the deadline to file in the PCT under the Paris Convention is 12 months, so you'd ordinarily file in the PCT prior to publication.

And, if you care about protection in Taiwan, the PCT won't help you.  You'll need to file in Taiwan within the 12-month Paris Convention deadline.

Even under your timeline, publication should not affect your Chinese national phase under the PCT.

Regards.

[patentatt]

Talked with a licensing person yesterday who may not have been clear on priority timelines, so I wanted to clarify that this timeline is correct and will work towards the goal of foreign licensing (say, China).

1. File U.S. NPA
2. Publish (online).
3. File PCT within one year of NPA, claiming priority to NPA.
4. Try to get Chinese licensee to pay for Chinese IP prosecution before PCT time runs out. This prosecution would claim priority to the US NPA vis a vis the PCT.

Main concern is that the publishing will not bar the Chinese application.

I believe that China has an absolute novelty requirement since 2008 (like the EU).  Since the PCT claims priority to the U.S. NPA, I don't think the online publication would constitute prior art.

But I'm not an expert...

[fb]

Not sure about official early publication, but we will certainly be publishing every detail online right away. My understanding is that official early publication takes about 6 months anyway, which we can't wait for because we need to show commercial acceptance in order to get licensee interest. And I believe we can just provide the application (or a link to it) for licensee prospects when needed.

[bartmans]

My understanding is that official early publication takes about 6 months anyway

This raises the suspicion that you have an earlier US filing (provisional application?), which would jeopardize your priority claim.

Your timeline as indicated in the first post only works (read: you can only claim a valid priority) if your US NPA is the first application and does not claim the benefit of an earlier application.

Regards.

[fb]

Yes, there was a provisional in April of this year. So, all timelines start with this provisional instead of the soon-to-be-filed NPA (if the NPA claims the provisional) ?

[JimIvey]

Yes, there was a provisional in April of this year. So, all timelines start with this provisional instead of the soon-to-be-filed NPA (if the NPA claims the provisional) ?

If so, your PCT application is due the same time as the real US application.

1. File U.S. NPA no later than 12 months after the PPA.
2. (self) Publish (online).
3. File PCT within one year of NPA PPA, claiming priority to NPA PPA.
4. Try to get Chinese licensee to pay for Chinese IP prosecution before PCT time runs out. This prosecution would claim priority to the US NPA PPA vis a vis the PCT.

Regards.

[fb]

Got it.

And I'd have 30 months from the PPA filing to get something filed in China.

[Yak]

You would have 18 months after filing the PCT to make your national stage entries.

[fb]

I think we are saying the same thing...  I got it from the PCT guide:

"You have, in most cases, 18 months from the time you file your international patent application (or 30 months from the filing date of the initial patent application of which you claim priority) before you have to begin the national phase procedures with the individual patent Offices. This means that you normally have at least 18 additional months before you have to fulfull the national requirements than if you do not use the PCT."

[wnorred]

Now I'm confused.

I thought that the general rule is that everything is due 12 months from the earliest claimed application, including the NPA and PCT filing. Now I see this 30-month discussion. The 30-month deadline assumes that an initial PCT filing occurred, right?

I have what looks like a bad situation. Client comes in with a provisional filed 5/5/09. He filed a nonprovisional on 3/12/10, but didn't refer to the provisional in that application. An intervening patent was published in 10/2009 that would be prior art preventing him from receiving a patent for his invention.

I can pay the outlandish $1410 and get back his provisional, but it looks like any PCT or foreign filings are toast, right? Or am I missing something.

I'm a newbie. This forum is awesome...far more useful than anything I've come across. Thanks to all.

Warren Norred
817-704-3984
200 E. Abram, Suite 300
Arlington, TX 76010

[JimIvey]

I thought that the general rule is that everything is due 12 months from the earliest claimed application, including the NPA and PCT filing. Now I see this 30-month discussion. The 30-month deadline assumes that an initial PCT filing occurred, right?

A provisional application is also considered and application and starts the 12 months of Paris Convention time.

The 30-month period for the international phase of the PCT is measured from the priority date, not the PCT filing date.

Regards.

[fb]

A provisional application is also considered an application

In this case, can "foreign patents pending" be marked on the product, when the product has a PCT and a U.S. NPA filed?

[Dazed-n-confused]

A provisional application is also considered an application

In this case, can "foreign patents pending" be marked on the product, when the product has a PCT and a U.S. NPA filed?

Is there some particular reason to mark "foreign" patents are pending?  I know of few jurisdictions outside the U.S. that provide legal benefit to patent marking, and contrariwise, inside the U.S., saying a "foreign" patent is pending also gives you no benefit.

If you have a pending U.S. regular application (above you mention pending NPA), why not simply say "patent pending" and leave it at that?

[NJ Patent1]

Warren:  I chime-in with Dazed re: marking and ask a question.  Why do you consider 1.4K outlandish?  In your view, what would be an appropriate fee, if any at all?  My question is sincere.  A priority date is potentially important property - until, as in your scenario, it self destructs from neglect.  Poof!  If you want to buy real property in Manhattan, 8 to 10K in fees would not be outlandish at all (in fact on low-side), and all you would have is a co-op or condo the value of which rises, and sometimes falls, and like an issued patent, still has to be"maintained".  The $s that can be made from a patent are potentially unlimited, so 1.4K seems like "peanuts".  In a capitalist society, she who takes the risks and invests time and $ reaps the reward.  But no guarantee.  I sense a disturbing (to me) opinion among smaller inventors, ignorant of the laws of anticipation and obviouslness, that they somehow have a "right" to a patent just because they think they have a big deal, or deserve real or percieved marketing benefits from stamping their product "patented".  If a patent / patent application is so darn important to a business, why would the business negelect it?  Would one neclect repairs to a $1M Manhattan co-op?