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[Yak]

I have a question related to filing a subsequent PCT or European national application.  I searched through the forum and found some prior threads on similar situations, but I am hoping to get a little more insight.  Given the following set of facts:

1-1-2010: Provisional application was filed for invention (subject matter A)
5-1-2010: Invention marketing firm began sending marketing materials identifying the invention and offering to license any potential patent rights for the invention
1-1-2011: Utility application was filed claiming the benefit of the provisional (utility application was filed with a non-pub request)
5-1-2011: Additional marketing materials and offers for licensing were made by marketing firm
11-1-2011: Inventor gets offer from English company wanting to commercialize the invention and now inventor wants to file either a European national application or a PCT application

It is my understanding that a PCT application can be filed for the invention (subject matter A), however the PCT cannot claim priority to either the provisional or the utility.  The provisional was not abandoned, withdrawn, or refused prior to the utility filing and did serve as the basis of claiming a right of priority for the utility.  So is this some type of catch 22.  Inventor can file a PCT for the invention, but the actions of inventor, vis-a-vis the marketing firm, would prevent national filings in any absolute novelty jurisdiction since no priority claim can be made? 

If no public disclosure was made for the invention, would the PCT and subsequent national filings be ok, with the understanding that any prior art before the PCT application would be legitimate basis for rejection since no priority can made to the previous applications?

But another aspect confuses me... I see that MPEP 1842 II. says:
II. INTERNATIONAL FILING DATE
An international application under the Patent Cooperation Treaty is generally filed within 12 months after the filing of the first application directed to the same subject matter, so that priority may be claimed under PCT Article 8 and Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property. PCT Article 11 specifies the elements required for an international application to be accorded an international filing date.

Is this language intended to prevent filing of the PCT at all since it is for an invention directed to the same subject matter as the provisional and utility which were filed more than 12 months prior?

What if inventor has changed the invention slightly and the PCT application was filed for improved invention (subject matter A and B)? 

What if subject matter B would likely be obvious in view of subject matter A?

[Yak]

Was this question too ridiculous?

[bleedingpen]

Yak, I am not going to sift through the MPEP to help ya out on this one, but I seem to remember reading that you must expressly abandon the already-filed applications in order to file a PCT and not upset Paris Convention. 

[JimIvey]

Was this question too ridiculous?

If you can distill it down to a couple of sentences, I can take a look. 

Regards.

[NJ Patent1]

"Is this language intended to prevent filing of the PCT at all since it is for an invention directed to the same subject matter as the provisional and utility which were filed more than 12 months prior?"

Yak:  I don't read it that way;  "is generally filed .... so that".  You file w/in 12 months so that you get the benefit of the earlier fiing date.  You noted this point in your OP.  As you noted, filing outside the 12 months (thereby eschewing any priority claim) opens up a "window" for aditional prior art, including applicants own.   I don't know if the "marketing activities" would be novelty desstroying in the EPO, but I suspect yes.  Acknowledging that "a little knowledge is dangerous",  there are novelty-preserving provisions in the EPC for disclosure at certain "trade shows", and some disclosures under confidentiality. 

"What if inventor has changed the invention slightly and the PCT application was filed for improved invention (subject matter A and B)?"  Have to pass on "same subject matter" .   

[patient]

Dear Yak,

I am not a US patent attorney but a European patent attorney. Therefore, I can only discuss your case from the European perspective.

Nevertheless, I would like to mention that some problems could occur to your US non-provisional application. It is my understanding that you filed a request for non-publication when filing the non-provisional application. A similar situation was discussed in the following thread:

http://www.intelproplaw.com/ip_forum/index.php/topic,20785.0.html

What I have learned from the discussion in the above thread is that there is a risk that your US non-provisional application will be deemed to be abandoned, if you go for foreign filing. But there are many people in this forum who know much more about these risks than I do.

Neglecting the potential hazards to your US application and viewing the case from the European perspective, you can of course file a PCT application. However, the question is whether you could validly claim the priority date of the utility application (January 1st, 2011). Of course, it is not possible at all to validly claim the priority date of the non-provisional application, since the non-provisional application was filed more than one year ago.

If the text of the utility application is identical to the text of the provisional application, then it is clear that the non-provisional application and the utility application relate to the same invention. In this case it is not possible to validly claim the priority date of the utility application (January 1st, 2011), because the utility application is not the first application in the series. The PCT application would only be entitled to its own filing date.

If the text of the utility application contains embodiments that had not been described in the provisional application, it will be possible to validly claim the priority date of January 1st, 2011 for these new embodiments. Those embodiments which had already been described in the provisional application would not be entitled to any priority date but only to the filing date of the PCT application.

The provisional application and the utility application have not been published yet. Therefore, the information presented in these applications does not form prior art for a PCT application or for a European patent application.

The marketing materials sent on May 1st 2010 and May 1st, 2011 may be novelty-destroying art or may be not. Under European patent practice, said material would only be novelty-destroying, if the material contained an enabling disclosure. Another question that you should answer is whether the recipients of the marketing material were under any form of non-disclosure agreement (be it explicit or implicit).

You should also keep in mind that there is no duty of candor in European proceedings. You are not obliged to direct the examiner’s attention to the marketing material. – There is a risk, though, that your competitors might find the marketing material and might use it against the European application in opposition proceedings.

I hope I could provide some help.

Best regards, Patient