Borderline new matter

Started by Tabo, 01-23-19 at 08:59 PM

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Tabo

Any suggestions on this one?

- Foreign application to which priority of a US application (not yet filed) is to be claimed
- Foreign application not yet published
- One year deadline to claim priority coming up

- Foreign attorney got an office action (or some similar action) stating prior art that they were unaware of
- The foreign attorney now wants to make slight changes to the US spec and add a line to the claim based on the spec changes to bring out the differences vis-a-vis the prior art
- The changes seem to only make clear what is already inherently described in the specification, but there is a possibility they are new matter (not sure)
- I offered to file a translation of the foreign app and simultaneously a substitute specification with the minor changes as the US app
- The foreign attorney asked if it would also be possible to just file the US app as is with the changes, still claiming priority to the foreign app

Questions:

What would be the best course of action here?

Where is the exact border with regard to new matter?

Any experience with this type of thing?

dab2d

Do it your way.... substitute spec. If the Examiner doesn't care, then you have a good leg to stand on
Nothing I post on this forum is legal advice.  You rely on anything I post at your own risk.  This post does not form an attorney client relationship between myself any person participating in this thread.

Toot Aps Esroh

I'm not positive here, but isn't this the same as when someone more fully fleshes out the utility spec for filing, but still claims priority to a provisional application?

In that case, the examiner is free to apply intervening art, should such be found, and if it goes to claims having the subject matter with the newer filing date.

Maybe the question gets stickier, ethically, when it comes to the provide or not-provide the translation question.  IIRC, you don't necessarily have to file a translation to properly claim priority to the foreign app - just a certified copy of that app.  (Someone correct me if wrong, please)

Examiners have always free to request that you submit a translation if they find intervening art and want to see whether it can be applied (i.e., if the US subject matter implicated by the intervening art is suspected to be absent from the foreign first filing).

So on that basis, I'd say you may be okay without providing the translation unless asked.  But it seems.... kinda slimy, if you know what I mean.  You have knowledge that you're adding new matter, and would be in the position that the examiner doesn't think about it if he sees (would-be) relevant art that misses due to the foreign priority date.

I do think this is new matter, to answer your other question.  You're adding subject matter (even if just "clarifying") that will end up in your claim.

Others might differ... see if you get more comments of course.

I got nothing to say here.  Y'alls all already know all this.


Le tigre n'a pas mangé la pellicule de plastique.

Tabo

Quote from: Toot Aps Esroh on 01-24-19 at 03:36 AM
But it seems.... kinda slimy, if you know what I mean. 

That's exactly the feeling I had. And the foreign attorney is just "innocently" asking about just filing the US app directly, but he must have the same feeling. I want to get a more quantified and law / USPTO-practice based grasp on that feeling, to see if it is justified or not.



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