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[prashant]

Dear All

I have query for example suppose

1.I have filed a provisional patent application in India in say July 2003

2.For the same invention I have filed a provisional in US(claiming priority of Indian provisional)in NOvember2003

3. I did filed a complete in India in October- 2003
but did not filed the same in PCT and in US.

Now as on today,Oct-2004  I want to file a PCT and  US application claiming the priority of US provisional filed in Nov-2003 which claims the Indian Priority

My query is

A) Can i file a US complete specification with out claiming the Indian Priority but still have a US provisional Priority?
                  if YES
then can I file a PCT application claiming the priority of US Provisional application i.e. Nov-2003

or

I have lost the priority for once and all ?
if Yes then I think i can still file the US and PCT application but will loose the priority
please confirm

regards
Prashant

[rahulvartak]

Hi Prashant,

I think you may find it difficult to file a PCT since the time limit is over with respect to the Indian provisional.

You could have abondoned the Indian provisional and complete before publication and claimed the prioriy of the US provisional of Nov 2003 for the PCT filing.
But this also seems difficult since the US provisional is derived from the Indian Provisional of June 2003.

since the first filing is considered as the priority document, the Indian provisional will be priority for the PCT.

But you can check out and find out if something can be worked around the priority claim of the Indian provisional for the US provisional.

In case it is possible to abondon the Indian application and consider only the US provisional as the priority document (which is doubtful), you still have a chance to file a PCT.  ?

regards,

Rahul

[JimIvey]

Rahul may have answered well, but I'll try to add a couple of thoughts.

Priority under the Paris Convention, whether PCT or a national application, is limited to 12 mos.  So, you can probably claim priority of the US provisional (Nov. 2003) in either the US directly or in the PCT.  You will not be able to claim priority of the Indian provisional filed July 2003.  That may or may not be fatal to your application, depending on what other acts happened (public uses or disclosures) and when.

You may be assuming that the US and/or the PCT has a "first application" rule like Taiwan -- that priority must be claimed within 12 months of the filing of the first application for the same invention filed anywhere in the world.  I don't believe either the US or the PCT has such a rule.  I'm not aware of any jurisdiction other than Taiwan that follows such a rule.

Regards.

[prashant]

Dear JimIvey

Thanks a lot for the answer but my qurery  still remains unanswred  can I request you to have a Yes or No answer to the  question

the question is
While filing the US complete specification can i disclaim the priority of Indian provisional ? and And then simaltaneously file a PCT application claiming the date of US provisional filing (Nov-2003) as the priority for PCT.

can I do these

regards
Prashant  

[prashant]

Dear Rahul
thanks for the reply
As you have written that
" I think you may find it difficult to file a PCT since the time limit is over with respect to the Indian provisional"

That is know to me and hence I have  the query to find the way out

secondly you stated  
"You could have abondoned the Indian provisional and complete before publication and claimed the prioriy of the US provisional of Nov 2003 for the PCT filing.
But this also seems difficult since the US provisional is derived from the Indian Provisional of June 2003"

There is no question of publication,the publication occurs only at the end of 18 months and for this example Jan-2005 will be the month of publication.

and can you expalin me in detail the statement
"since the first filing is considered as the priority document, the Indian provisional will be priority for the PCT"

and lastly what i am trying is
To use my US provisional date of Nov-2003 for the PCT filing and US filing and disclaiming the July-2003 Indian priority
So that i can protect my invention through PCT all over the World (except India) having the priority of NOV-2003.  

Best regards
Prashant  

[rahulvartak]

Dear Prashant,

As you have correctly interpretated "You could have abondoned the Indian provisional and complete before publication and claimed the prioriy of the US provisional of Nov 2003 for the PCT filing.  
But this also seems difficult since you have stated that the US provisional is derived from the Indian Provisional of June 2003"

It means the same as using  the  US provisional date of Nov-2003 for the PCT filing and US filing and disclaiming the July-2003 Indian priority.

What I am apprehensive about is that you have filed your US provisonal in Nov 2003 where you have CLAIMED  priority of the Indian provisional. Under such circumstances where you have claimed the Indian priority for the US provisonal , would the PCT consider the US provisional as the Priority document disregarding the priority claim of the Indian provisional in the said US provisional priority document.

The above mentioned facts  do not seem to be consistent with the  35 USC 111 (b) provisional Application (7).
NO RIGHT OF PRIORITY OR BENIFIT OF EARLIEST PRIORITY DATE.

Under such circumstances where you cannot claim  inidian priority for US provisional , there should be no problem for filing PCT based on US complete(non provisional) which you may have to file by Nov 2004.


You should have no problem about claiming  the US priority for PCT as per PCT rule 4.10  or Article 8 as below

Article 8


Claiming Priority

 (1)  
 The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.  



(2)   (a) Subject to the provisions of subparagraph (b), the conditions for, and the effect of, any priority claim declared under paragraph (1) shall be as provided in Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property.



       (b) The international application for which the priority of one or more earlier applications filed in or for a Contracting State is claimed may contain the designation of that State. Where, in the international application, the priority of one or more national applications filed in or for a designated State is claimed, or where the priority of an international application having designated only one State is claimed, the conditions for, and the effect of, the priority claim in that State shall be governed by the national law of that State.




As far as the statement  
"since the first filing is considered as the priority document, the Indian provisional will be priority for the PCT"  will be applicable if you claim the priority of the earliest (first) filing.

Hope things are clearer.



best regards,

Rahul Vartak.

[JimIvey]

Hi Prashant,

I trust Rahul's response answered your question.  His quote of 35 USC 111(b)(7) should suffice -- no priority can be claimed in a US provisional application.  

So, the answer is "No."

Regards.