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Author Topic: Co-pending US applications  (Read 328 times)

fb

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Co-pending US applications
« on: 05-28-12 at 12:50 pm »

I've heard a few times that you need to determine the non-U.S. filing objectives before filing a second co-pending U.S. application. Why might this be?
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khazzah

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Re: Co-pending US applications
« Reply #1 on: 06-07-12 at 12:18 pm »

>second co-pending U.S. application.

"Second" in what sense? Are you referring to filing a continuation/divisional?
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fb

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Re: Co-pending US applications
« Reply #2 on: 06-07-12 at 01:25 pm »

No, a second provisional on the same invention, to be claimed along with the first provisional.
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NJ Patent1

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Re: Co-pending US applications
« Reply #3 on: 06-08-12 at 02:01 pm »

fb:  I'm not sure I fully understand the question.  On several occasions I have filed a PCT (not direct Paris in EPO) claiming the benefit of the filing date of several US provisional applications.  I didn't encounter a problem at the EPO regional stage.  But some jurisdictions, Poland comes to mind, required that I assign individual priority dates to individual claims.  That was a headache. 
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Oh, Crud

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Re: Co-pending US applications
« Reply #4 on: 06-08-12 at 02:22 pm »

fb:  I'm not sure I fully understand the question.  On several occasions I have filed a PCT (not direct Paris in EPO) claiming the benefit of the filing date of several US provisional applications.  I didn't encounter a problem at the EPO regional stage.  But some jurisdictions, Poland comes to mind, required that I assign individual priority dates to individual claims.  That was a headache.

NJP - what you mention is the only thing that comes to mind given fb's OP and follow-on post.

Note Japan, Russia generally require this also.  I inherited one where the PCT filing had 50+ claims and was an amalgamation of TEN serially filed provisionals, all fairly different from one another.  Luckily the original drafter was still around and willing to help me sort the mess, to the extent we could.  (Some claims we had to point to Prov-1 for element-A, Prov-2 for element-B, etc.) 

I've also found that in the EPO, if the question comes up the examiner will most often of his/her own accord review multiple priority documents and assign available prior art dates to claimed subject matter.  But I have also rarely been requested by EPO examiners to provide such info myself. 
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fb

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Re: Co-pending US applications
« Reply #5 on: 06-08-12 at 05:12 pm »

Quote
PCT filing had 50+ claims and was an amalgamation of TEN serially filed provisionals, all fairly different from one another.

That's pretty much our situation. The provisionals are either for the same invention, or completely different ones; the goal was to just get a filing date that we could float for 30 months, realizing that only the first invention in the PCT would be searched (and therefore only pay on search fee).

I thought I had read that if you have multiple co-pending applications, a PCT would not be able to claim priority to the earlier one for some reason. But it might have been for a different situation, where you want to withdraw a priority claim to the earliest document so as to advance the PCT's useable date.
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