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[Dazed-n-confused]

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 don't think you're missing anything.  You can recover the provisional priority, but I don't know of any way to get the PCT.

Also, maybe should discuss with your client a couple of things in view of the costs.  How good/strong is the prior art against him?  If it's pretty much spot on, leaving no room for useful claims, then you really need to start thinking things through and asking him other questions to help him make an informed decision.

The 10/2009 pub was filed ca. 4/2008, right?  So even if you get the 5/2009 priority, the 10/2009 pub is still 102(e) art.  Can he both antedate 4/2008 and show diligence through his 5/2009 filing?  If not, frankly, it seems he's been beaten to the punch. 

[wnorred]

Lol...it's outlandish because I don't want my client to have to pay it. I really don't think it is all that hideous, but I'd like to see fees reflect the cost of doing business at the USPTO "for real" and not based on "let's punish them for this", which is what this seems to be. I also like the halved fees for the smaller organizations, and this fee doesn't provide that discount.

I hate asking questions that I'm sure are easily answered, but this 30-month deadline is still eluding me. I see that from the priority date, I have 30 months to enter the national stage of PCT countries. BUT, surely I have to have already submitted my application to the PCT within the first 12 months and received the results of the RO to be able to file the national applications, right?

In my real life situation above, nothing was done at the international stage at all. I'm going to pay the "outlandish" $1.4k and get the earlier filed provisional date to overcome art in the US application taht , but 30 months since the provisional date will be next month. I figured that the invention is lost at the international level based on lack of prosecution during the first 12 months. Am I in error, and I can somehow still go after patents in other countries and have some hope, though there is clearly disqualifying prior art that was published in 2009 (and filed in 2008)?

[wnorred]

Lol...it's outlandish because I don't want my client to have to pay it. I really don't think that it is all that hideous, but I'd like to see fees reflect the real cost of doing business, and not based on "let's punish them for this", which is what this seems to be. I also like the halved fees for the smaller organizations, and this fee doesn't provide that discount.

I hate asking questions that I'm sure are easily answered, but this 30-month deadline is still eluding me. I see that from the priority date, I have 30 months to enter the national stage of PCT countries. BUT, surely I have to have already submitted my application to the PCT within the first 12 months and received the results of the RO to be able to file the national applications, right?

In my real life situation above, nothing was done at the international stage at all. I'm going to pay the "outlandish" $1.4k and get the earlier filed provisional date to overcome art that would otherwise be disqualifying for my client's patent.

For this inventor, 30 months since the provisional filing date will be next month. I figured that the invention is lost at the international level based on lack of prosecution during the first 12 months. Am I in error, and I can somehow still go after patents in other countries and have some hope, though there is clearly disqualifying prior art that was published in 2009 (and filed in 2008)?

[fb]

This converted-to-text quote makes it all clear...

1. File U.S. *** NPA *** no later than 12 months after the *** PPA. ***
2. (self) Publish (online).
3. File PCT within one year of *** PPA ***, claiming priority to *** 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 *** PPA *** vis a vis the PCT.

Since I have an PPA in April, the PCT and the US NPA have to be done by next April. Who has time to do things so quickly.

Is there some particular reason to mark "foreign" patents are pending?

License marketing.

[NJ Patent1]

Warren and fb:  To the extent there are any residual questions:  A US provisional or regular utility app is filed.  A “priority date” is established.  Applicant has one year from the priority date to file a PCT (or multiple Paris) application(s).  If a PCT is filed w/in that time limit, the 30 (or 31) month limit for filing national / regional applications based on the PCT is measured from the priority date.  No PCT filed w/in the time limit?  No problem.  The 30 month time limit is irrelevant.  It only relates to national / regional applications based on a PCT.  If a US provisional is filed and allowed to expire / go abandoned, then, IMO (and that of some others here), a US regular utility application filed after abandonment of the provisional could be the priority application for a PCT filed w/in one year of filing the US regular utility that doesn't - and couldn't -  claim the benefit of the filing date of the provisional. 

What I don’t know w/ any certainty is whether “resuscitation” of an abandoned provisional would be / must be honored in other PCT contracting states if the PCT was not filed w/in one year of the “resuscitated” date.  But I seriously doubt it. Study of the treaty required. 

[fb]

Yes I have thought about forgetting about the April PPA's and just file the NPA new, but there has been a lot of activity in our sector this year and I'd had to find someone has been working on the same thing in secret, and worse, find out I can't re-claim priority to the PPA for some reason.

[fb]

"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?)

Does publication of the NPA at the PTO take place 18 months after the PPA, or the NPA, filing date?

[bleedingpen]

"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?)

Does publication of the NPA at the PTO take place 18 months after the PPA, or the NPA, filing date?

18 months from earliest filing date

[wnorred]

NJ, I really don't think it's outlandish, except that my client has to pay it.

I usually try to ask questions in a neutral tone, but sometimes I bring along my Pail of Incessant Whining. No charge for it though.

Thanks to all who replied!

W