mersenne, suppose the only disclosure on the original is USPTO's publication (and a later publication by WIPO on the PCT). Now a PPA is filed before the 1 year deadline on the USPTO publication. What are the odds USPTO can successfully assert their publication is prior art when the PPA becomes a utility application? Am I correct that the UA gets 1+1=2 years from the publication date in the above case?I think you're creating some confusion by referring to a "1 year deadline on the USPTO publication". I assume that you're referring to the 102(b)(1) exception for disclosures made within a year of the effective filing date. But let's back up a little bit. Since this is post-AIA, there are two ways that a published application can serve as prior art: 102(a)(1), and 102(a)(2). If you file your new application after the original application publishes, then the published original application will be prior art under 102(a)(1). If you file your new application before that original application publishes, then the published original application MAY be prior art under 102(a)(2). I say MAY, because if it does not name another inventor, then it won't be valid prior art.
Now, note that the exceptions under 102(b) ONLY apply to 102(a)(1) prior art. I don't think that a court would accept the argument that the publication by the USPTO falls within the scope of "...by another [the USPTO] who obtained the subject matter disclosed directly or indirectly from the inventor", and I would not want to be the first one to make that argument.
My suggestion to you is to make sure that 102(a)(1) will not apply, and that is done by filing the new application prior to publication of the original application. You can do this with a priority claim to the prior application, or without. In either case the prior application will not be prior art to the new.
I'd like others to chime in on this topic. Under the OP's hypo,
(a) The earliest public disclosure is the publication of the first patent application.
(b) Less than one year has passed since the the publication date of the first patent application.
Then, according to AIA 102:
35 U.S.C. 102 Conditions for patentability; novelty.
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a
printed publication, or in public use, on sale, or otherwise
available to the public before the effective filing date of the
claimed invention; or
(1) DISCLOSURES MADE 1 YEAR OR LESS
BEFORE THE EFFECTIVE FILING DATE OF THE
CLAIMED INVENTION.—A disclosure made 1 year or less
before the effective filing date of a claimed invention shall not
be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or
joint inventor or by another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint
So it would appear that the 1-yr grace period covered under 102(b)(1) would be applicable if a second application were to be filed. I don't interpret the statute to read that the USPTO disclosed the material because it was responsible for publishing the application. The inventor(s) disclosed the material because they submitted the application to the USPTO and did not request non-publication. Similarly, if the inventor(s) publish an article in an IEEE journal, it is not the IEEE that discloses the material because it publishes the journal; it is the inventor(s) who disclose the material because they submitted the article for publication. In which case there is a 1-yr grace period from the date of publication of the IEEE journal article.