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Author Topic: US patent application and pct  (Read 550 times)

yh_sg

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US patent application and pct
« on: 10-02-17 at 10:17 pm »

Hi,
When an examiner conduct prior art search for an US country patent application, pct patents in scope?
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MYK

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Re: US patent application and pct
« Reply #1 on: 10-03-17 at 02:32 am »

Yes, WIPO publications are prior art.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

yh_sg

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Re: US patent application and pct
« Reply #2 on: 10-03-17 at 05:14 am »

Thanks MYK.

How about patent publications in other Asia countries such as Japan, Singapore, and China?
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MYK

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Re: US patent application and pct
« Reply #3 on: 10-03-17 at 09:17 am »

Yes.  See 35 USC 102 for what constitutes prior art.  There is no longer a requirement that they be in English.  Any patent or "printed publication" qualifies.  If your application was filed before the AIA came into effect, then see the old pre-AIA 35 USC 102, which sometimes requires that they be in English.

https://www.law.cornell.edu/uscode/text/35/102
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

yh_sg

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Re: US patent application and pct
« Reply #4 on: 10-03-17 at 10:22 am »

That's very helpful.

Would it be correct to conclude that if a patent in, say Japanese, just granted by Japan patent office, no one anywhere in the world is possible to claim the same (until the Japanese one is expired)?

Even if the later one was issued, the Japanese inventor has all the rights to object the later one, if it did happen. Am I right?
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MYK

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Re: US patent application and pct
« Reply #5 on: 10-03-17 at 11:16 am »

That's very helpful.

Would it be correct to conclude that if a patent in, say Japanese, just granted by Japan patent office, no one anywhere in the world is possible to claim the same (until the Japanese one is expired)?
No, it would not be correct.  "No one else can (in the sense of "should ever be able to get away with") claim (in a valid, enforceable, issued patent) the same EVER" is correct.

Even if the later one was issued, the Japanese inventor has all the rights to object the later one, if it did happen. Am I right?
Not entirely;  anyone from anywhere, not just the Japanese inventor, can file for a reexamination, IPR, PGR, or lawsuit attempting to invalidate.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

yh_sg

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Re: US patent application and pct
« Reply #6 on: 10-03-17 at 12:51 pm »

Quote
No, it would not be correct.  "No one else can (in the sense of "should ever be able to get away with") claim (in a valid, enforceable, issued patent) the same EVER" is correct.
The EVER makes a lot sense 8)

Wondering what's the benefit of wipo application, after an US patent is granted?

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Peacefulness

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Re: US patent application and pct
« Reply #7 on: 10-03-17 at 01:02 pm »

Wondering what's the benefit of wipo application, after an US patent is granted?

The point of PCT applications (Patent Cooperation Treaty) which are published as WIPO documents is to provide an easy way to secure filing date with multiple patent offices for the same application at the same time.  Instead of filing an application with EPO, USPTO, JPO, China's Patent Office, Australia's patent office, etc. You can file the PCT at an approved location here most of these Patent offices qualify as such and designate all the countries you wish to file and it secures your filing date.  Since prior art is based off the filing date of the application, then you will be able to minimize how much prior art is available by getting an earlier filing date.
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yh_sg

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Re: US patent application and pct
« Reply #8 on: 10-03-17 at 09:20 pm »

Quote
...it secures your filing date...
A filing date can be established by the initiatial US application as priority.
Is that really a wipo benefit?
« Last Edit: 10-03-17 at 09:22 pm by yh_sg »
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Peacefulness

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Re: US patent application and pct
« Reply #9 on: 10-04-17 at 03:31 pm »

the purpose of the pct is to streamline the initial filing process, making it easier and initially cheaper to file a patent application in a large number of countries.
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