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[Scott562]

Suppose that today (1/31/08) I want to file a PCT application based on a CIP (filed 3/1/07) of a US application (filed 10/1/05 and published 10/1/06) claiming priority to a provisional application (filed 3/1/05).  Based on my understanding, I can only claim priority to the CIP because the other applications were filed more than a year ago.  Is this correct?  If so, can the US application filed 10/1/05 be used as prior art against any national stage application based on the PCT application?  Thanks for your help.

[alconada]

You are correct. You are entitled to claim priority from applications filed at the most 12 months before the filing date of your application. Thus, it is now too late to claim priority from the original US application. Moreover, you can only claim priority from the first application for a given subject-matter so that if your PCT application contains subject-matter which was present in the published US application, your priority claim will not be valid. Thus, not only the publication of the US application but any other prior art published until the date of filing of the PCT application qualifies as prior art for the purposes of novelty and obviousness. I am savvy with the European procedure but I believe this will be the same in other national/regional offices because it is based on principles included in the Paris Convention, which covers most of the world.

Of course, this only applies to the subject-matter which was included in the first US application. Any subject-matter added in the CIP application will enjoy a valid priorrity claim if you file a PCT application. Still the contents of the published US application will be citable for the purposes of inventive step against said added subject-matter.

I hope this helps

[Scott562]

Thanks alconada.  This is helpful information.