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Author Topic: 'First to Invent' question  (Read 2954 times)

Isha

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'First to Invent' question
« on: 05-18-08 at 12:29 am »

This query relates to USPTO’s  'First to Invent' condition

If I am in the process of filing a CIP to my earlier pending non-provisional patent application with USPTO and (I come to know that) someone else has filed a provisional – or - non-provisional with USPTO claiming exactly the same invention, who will get a priority date?

1) Me (claims in my CIP)?, because it perfectly connects to my earlier patent and so I can claim priority date of my earlier application?
or
2) The other person who has filed earlier? As what I've filed becomes prior art?

(taken for granted my CIP is valid, as in, it is a proper development over the earlier patent)

Thanks in advance.
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still_studying

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Re: 'First to Invent' question
« Reply #1 on: 05-18-08 at 08:16 pm »

Everything you disclosed in your original application retains its priority date of the initial filing date.  The new material you added to the CIP gets the date of the filing of the CIP.

If the other inventor's application was filed in between those two, then your initial filing can be used as prior art against the other inventor's application, and the other application can be used as prior art against the new matter in your CIP.

"First to invent" is a bit more slippery than that, though.  You may still be able to prove earlier invention through showing that you had invented the subject matter earlier, e.g., through witnessed lab notebooks, and that you were diligent in pursuing the invention and the patent applications.

Of course, the OTHER inventor can also try to prove the same thing, and may be able to pre-date your original filing.

It sounds like you might be headed for an interference hearing before the BPAI.  You would be very well advised to find a patent attorney to help you, if you don't have one already.
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