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Author Topic: Provisionals counting for foreign priority  (Read 283 times)

fb

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Provisionals counting for foreign priority
« on: 11-25-11 at 09:41 pm »

Want to make triple sure, that after a US provisional is filed (properly), that publication/marketing/sales can then occur without it creating a bar to foreign patenting. I.e., all the Paris and PCT states will recognize a US provisional as a filing-before-publication.
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trw

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Re: Provisionals counting for foreign priority
« Reply #1 on: 11-25-11 at 10:11 pm »

Yes, of course, make sure that all of the patentable features have adequate written description and are fully enabled in your provisional application.  I'm sure there are others on this board who would advise you to skip the provisional, not because it is an improper priority application, but because provisionals tend to be drafted so poorly that they give a false sense of security.
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BobRoberts

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Re: Provisionals counting for foreign priority
« Reply #2 on: 11-26-11 at 08:50 am »

Does the Provisional application have to have at least one claim to properly serve for PCT priority?  It's been a long time since I've filed a PCT application, but it just came to mind. 
   
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NJ Patent1

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Re: Provisionals counting for foreign priority
« Reply #3 on: 11-26-11 at 12:53 pm »

BobRoberts:  I’m not aware of any such “rule”.  If there is one, I have on occasion broken it.  Up to now w/o consequence in national stage filings off the PCT.  There appears to be two schools of thought, one pro claims one con, each appears to rest on strategy more than on rules. 
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fb

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Re: Provisionals counting for foreign priority
« Reply #4 on: 11-26-11 at 02:16 pm »

I've seen it said many times, that you do need one claim.

However I was more digging to see if there was some hidden situation where a US provisional would not suffice, like in some non-Paris states.
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patentatt

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Re: Provisionals counting for foreign priority
« Reply #5 on: 11-26-11 at 03:04 pm »

Can anyone provide any evidence/proof (link?) for the claim that all non-U.S. countries will honor a U.S. provisional file date for both the Paris Convention and PCT Treaty?
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‘‘Only you can create prosecution history estoppel.”
—Richard Killworth

fb

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Re: Provisionals counting for foreign priority
« Reply #6 on: 11-26-11 at 03:21 pm »

http://www.uspto.gov/patents/resources/types/provapp.jsp

... says "Begins the Paris Convention priority year."
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bartmans

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Re: Provisionals counting for foreign priority
« Reply #7 on: 12-28-11 at 08:24 am »

Of course this only concerns countries that have acceded to the Paris Convention. There are still some countries that are not a member.
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