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[westdene]

I am posting this msg to seek some advice about an European Patent to be filed in the near future. The invention was already filed as a patent application in Argentina, but unfortunately the 1 year term for claiming priority has expired. So my questions are the following:
What are the chances of filing a patent application about the same invention as the one filed in Argentina without claiming priority? the Argentinean application has not been published yet  
The inventor is supplying his invention to a major firm in Europe and this firm has already made some publications about this invention under the firm's name. Could this be considered as prior art once the application is to be published and examined, since the publication of the invention was made before the date of filing of the application and under a different name than the inventor's? i.e.Third parties filing objections to the application using the publication already made by this major firm.
Can the inventor, in case the above happens, demonstrates that the invention is actually of his property by showing to the Examiner his Argentinean Patent? or this could be a negative thing for the EPC application?.
If the filing is succesful can the applicant use the 1 year term to file the invention in different countries claiming priotiry of the EPC application?  
Thank you in advance ppl for your time in this matter and I am looking forward for your comments as soon as possible.

[Chris_Whewell]

The inventor... ... has already made some publications about this invention under the firm's name.  

This is unfortunate, as European countries have an absolute novelty requirement for patentability.  It sounds as though the publications are novelty-destroying as to their contents, absent the ability to claim a priority date prior to the date of the publications.  

[JimIvey]

I'm not the resident European expert, but I'll take a stab at this questions.

You can file the application, but it should be rejected under the facts you give.  Aside from Taiwan, you don't have to claim priority in every instance that you can claim priority.  However, the effective filing date (with or without claiming priority) must pre-date all publications of the invention.

The publications by the major firm should be considered prior art.

Showing the Argentinean application in Europe could prove that the major firm couldn't patent it there, but it won't do anything to show the inventor has any rights in Europe.  Proving you thought of it first isn't enough to get a patent.

You could probably claim priority of the EPO application everywhere but Taiwan.  However, the effective filing date would then be of the EPO application, not the Agentinean application.  You can only effectively back-date the application (by claiming priority) up to one year -- no more.  Well, with one exception -- the PCT.  But that's not relevant here.

Missing filing deadlines is one area where there really is no recovery for getting it wrong.  Sorry for the bad news.  However, like I said, I'm not the European expert here.  Maybe someone can tell you that I'm wrong.

Regards.

[westdene]

First of all thank you both Chris and Jim for your prompt response.

Showing the Argentinean application in Europe could prove that the major firm couldn't patent it there, but it won't do anything to show the inventor has any rights in Europe. Proving you thought of it first isn't enough to get a patent.

I was referring in the event that if the application is filed then published, if any third party provides the Examiner with a copy of the publication (brochure made by this firm), and the examiner considers that publication as prior art, can the applicant argue that that product is of his invention by showing his Argentinean application, which filing date is prior to the release of such publication. This is the point where I dont know wether showing the Argentinean application could be negative to the EPC application.

You could probably claim priority of the EPO application everywhere but Taiwan.  However, the effective filing date would then be of the EPO application, not the Agentinean application.  You can only effectively back-date the application (by claiming priority) up to one year -- no more.  Well, with one exception -- the PCT.  But that's not relevant here.

This is another thing Im not too sure about. In the event that the EPC is filled, how can the same applicant file several other applications in other countries claiming priority from the EPC, while the Argentinean application is still alive and surely published?.

BTW filing a PCT climing priority from the EPC is another idea that the client has in mind.

[JimIvey]

First of all thank you both Chris and Jim for your prompt response.

You're welcome!  Just lucky I was catching up at that time....  

I was referring in the event that if the application is filed then published, if any third party provides the Examiner with a copy of the publication (brochure made by this firm), and the examiner considers that publication as prior art, can the applicant argue that that product is of his invention by showing his Argentinean application, which filing date is prior to the release of such publication. This is the point where I dont know wether showing the Argentinean application could be negative to the EPC application.

If I understand the question, you're asking whether you can show invention prior to the publication to thereby pre-date the prior art.  Here (in the U.S.), the answer is "Yes" under certain circumstances.  Everywhere else (as far as I know), the answer is "No."  It's a simple matter of comparing the effective filing date of the EPO application to the publication date.  

If you were able to obtain an EPO effective filing date (referred to as a priority date) which was the same as your Argentinean filing date, the EPO priority date would pre-date the publication -- no problem.  However, it sounds here as if the EPO filing date is (or will be) after the publication date and there is no earlier priority date.  No patent (assuming the publication discloses everything you want a patent to cover).

Assuming the Agentinean application is not yet published and does not provide priority for the EPO application, showing it to the EPO should have no effect.

This is another thing Im not too sure about. In the event that the EPC is filled, how can the same applicant file several other applications in other countries claiming priority from the EPC, while the Argentinean application is still alive and surely published?.

Consider this hypothetical:

Argentinean Application A filed 1 jan 2003.

European Application E filed 1 jan 2004, claiming priority of Application A -- effective filing date is 1 jan 2003.

Application A published at 18 months (assuming Argentina follows the same rule that just about everyone else does).  Publication date is 1 jul 2004.

Japan Application J filed 1 jan 2005, claiming priority of Application E -- effective filing date is 1 jan 2004.

Thus, Application J's priority date (1 jan 2005) pre-dates the publication date (1 jul 2004).  Assuming there is no other prior art, I believe this can work.  Now, bear in mind that this issue has never come up in my practice -- so I haven't actually researched the law behind this issue, but I understand that it does work this way.

In most cases, there is prior art in the year that follows the first application (Application A in the above scenario), so Application J typically doesn't work.

One last point: Taiwan applications must be filed within 12 months of the first application anywhere in the world for the same invention.  There's no PCT.  And there's no later priority in the manner described above.

BTW filing a PCT climing priority from the EPC is another idea that the client has in mind.

PCT won't help here.  You have the same problems.

Consider this hypothetical -- slight modification of the above scenario.

Same Application A.

PCT application P filed on 1 Jan 2004, claiming priority of Application A -- effective filing date is 1 Jan 2003.  Without that priority, Application P's effective filing date is *after* the prior art publication of the "major firm" you mentioned.

The deadline for filing national applications based on Application P is 1 Sep 2005 or, if Chapter 2 is requested, 1 Jul 2006.

Applications E and J filed by the deadline based on the priority of Application P.  They both have the effective filing date of Application P.

For Applications E and J to survive, Application P must effectively pre-date the publications by the "major firm".  Again, if Application P has the priority date of Application A, no problem.  If Application P has a later filing date, it sounds like you're out of luck.

Regards.

[westdene]

Argentinean Application A filed 1 jan 2003.

European Application E filed 1 jan 2004, claiming priority of Application A -- effective filing date is 1 jan 2003.

Application A published at 18 months (assuming Argentina follows the same rule that just about everyone else does).  Publication date is 1 jul 2004.

Japan Application J filed 1 jan 2005, claiming priority of Application E -- effective filing date is 1 jan 2004.

Is this even possible?? I mean, an application claiming priority from another application which also claims another prority? shouldnt application J claim priority from application A instead of E? disregarding the dates.
Anyway, thank you for your reply, it was quite illustrative and helpful. But I found out that there is no point in filing an EPC application due to the EP firm brochure already available to the public.
Thank you again, and be sure that I will use this forum every day now that I have discovered

BTW Jim are you attending INTA this year?

[JimIvey]

Re priority over priority:  I'm fairly certain about this much:  if Application E in the scenario above did NOT claim priority of Application A, Application J could claim priority of Application E, notwithstanding the existence of Application A.  The only exception of which I'm aware is Taiwan.

Normally, I don't do research for this forum because of the time it takes to do so.  However, I already opened my big mouth, so I looked up the Paris Convention Treaty.
http://www.bitlaw.com/source/treaties/paris.html

I don't see anything that bars Application E from claiming priority of Application A *and* Application J claiming priority of Application E.  I don't see anything that requires permitting that either.  I suppose it's up to each country whether to allow that.  

For what it's worth, I don't see anything in the U.S. statute which doesn't permit that either:
http://www4.law.cornell.edu/uscode/35/119.html

Important note:  Notice that Application J does NOT get the priority date of Application E -- only the actual filing date.

Re INTA:  No, sorry.  I won't be there.  I don't do much trademark work so it doesn't make sense for me.  Have fun though!

Regards.

[M. Arthur Auslander]

Dear Westdene,

If you have something of commercial value, you are likely to find improvements as you move it into use. There may be patentable subject matter in the improvement, of value, even if the main invention is in the public domain. For example, the electric light bulb and the flourescent tube.

[westdene]

Mr Auslander:
                    I see your point in trying to file a new application based on improvements made to the original invention. Iif its novel why not file an application, right?

But in this particular case the invention, as it was already filed, is the thing that my client is selling, and not any other modification. So there is no point  in filing an application that will be obejected as soon as its published, nor filing an application about some improvement that no body wants. But thnx for the tip. .