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[AAKKdoublesuited]

Hypothetical:

Let's assume X files a U.S. Application in January 2000 and then files a PCT in January 2001 (within the 1 year window).

Y then files a U.S. Application covering the same invention as X's application in August 2000. (after X files)  Y then files a PCT in August 2001.

X's application publishes in July 2001 unbeknownst to Y

[removed for clarity]

FOREIGN - My question is, I know that the rule is "first to file" and therefore X should be granted the patent.  However, the PCT Rule 33 says that prior art is only what is available prior to the priority date of Y's application.  So what will be used as prior art to reject Y's foreign patent?

**As a second question, assume X had never filed a PCT, would Y then be barred from obtaining a patent in the US but freely able to obtain a patent abroad?

Thanks for any help.

[JimIvey]

IN THE US - I know that X's application is not prior art against Y until it issues (102e) ... .

I don't believe that's correct.  See 35 USC 102(e).  Published applications count, too.

FOREIGN - My question is, I know that the rule is "first to file" and therefore X should be granted the patent.  However, the PCT Rule 33 says that prior art is only what is available prior to the priority date of Y's application.  So what will be used as prior art to reject Y's foreign patent?

There was a discussion about this long ago and my vague recollection is that most of the regular foreign jurisdictions have something similar to 102(e) -- but different due to the first-to-file paradigm.  Perhaps a published application (in the same jurisdiction, if I recall correctly) filed before the filing of another application is prior art for that other application.  Something like that.

One thing is certain.  Someone else here knows more about this than I do.   But I thought the correction re 102(e) was important.

Regards.

[PeterG]

I would like to make some explanations to your second question based on Chinese Patent Law.

If X had never filed a PCT application, X’s U.S. application will of course not be considered as prior art reference when evaluating the patentability of the Chinese national application of Y'S PCT application because U.S. publishing date of the former application is later than the priority date of Y's PCT application.  

In case that X had filed a PCT application and then entered Chinese national stage, X's application will not treated as prior art reference when evaluating  Y's Chinese national application. We call X's Chinese application as a "conflict application" provided that X's Chinese application is published in China, and, in this case, Y's application shall be rejected on the ground of lacking novelty.


Best regards,