A PCT Filing Challange...

[Noboss14]

Hello,

I have searched many sources for this answer (including the inventor's assistance center at the USPTO) and have yet to find solid advice. Hopefully, one of you can shed some light here.

I filed a US non-provisional application on July 28, 2007, claiming X. I was in somewhat of a rush to get a priority date as the invention is in a highly competitive field and provided a somewhat vague "detailed description" as the invention was not yet throrughly fleshed out. I continued to refine the invention and filed a CIP on October, 1, 2007 with a much more thorough explaination of the invention which further defines X but also defines and claims Y as well.

Now, I am approaching my 1 year deadline and need to make decisions on a PCT filing. My objective is to eventually enter into the national stage in several countries. The question is in knowing which priority application to claim. If I claim the parent app., I can only claim X in my PCT, and will have a somewhat unstable parent app to depend on.

On the otherhand, if I claim priority to the CIP, I believe the parent app will prevent me from entering the national stage is it will be considered prior art. I have read in a few blogs that if I go this route (CIP as priority) and file the PCT within 1 year from filing the parent app (before publication or public disclosure), then the parent app would NOT be considered prior art, however I would assume the priority date on the parent would be the determining factor, not the public disclosure date.

A third option I've explored just a little bit is to file the PCT on the CIP application, and simeltaneously abandon the parent app before it is publically disclosed. In this instance, I can potentially claim X + Y, where in the US, "X claims" would still have the priority date of the parent app, and Y claims would have the CIP date, and in international applications, X and Y would have the CIP priority date.

Got all that? If anyone cares to shed some wisdom it would be greatly appreciated!

California

 

[divgradcurl]

Now, I am approaching my 1 year deadline and need to make decisions on a PCT filing. My objective is to eventually enter into the national stage in several countries. The question is in knowing which priority application to claim. If I claim the parent app., I can only claim X in my PCT, and will have a somewhat unstable parent app to depend on.

Correct.

On the otherhand, if I claim priority to the CIP, I believe the parent app will prevent me from entering the national stage is it will be considered prior art. I have read in a few blogs that if I go this route (CIP as priority) and file the PCT within 1 year from filing the parent app (before publication or public disclosure), then the parent app would NOT be considered prior art, however I would assume the priority date on the parent would be the determining factor, not the public disclosure date.

I believe that your analysis is correct. PCT Rule 64.3 -- while complicated -- if carefully parsed seems to suggest that if you claim the CIP as priority with the 12 month period of the CIP, and the parent app has not yet published, then it does not appear that the parent app would be considered prior art, although it would appear in the international search report (assuming that it published prior to the search being undertaken).

A third option I've explored just a little bit is to file the PCT on the CIP application, and simeltaneously abandon the parent app before it is publically disclosed. In this instance, I can potentially claim X + Y, where in the US, "X claims" would still have the priority date of the parent app, and Y claims would have the CIP date, and in international applications, X and Y would have the CIP priority date.

Got all that? If anyone cares to shed some wisdom it would be greatly appreciated!

California

This is a possibility, and would appear to fall under the PCT Rule 64.3 exceptions. It might also be possible to request nonpublication under 37 CFR 1.213, but this may be an issue because both X and Y are still in play for the PCT. Unless you can talk with a patent practitioner with specific knowledge of your situation who can review all of the facts of your situation and advise you accordingly, a nonpublication request is probably a risky move, and express abandonment under 37 CFR 1.138 is probably a safer tool.

If you haven't already, you can access the Manual of Patent Examining Procedure (MPEP) from the USPTO Patent webpage, and look up the requirements for express abandonment, plus the rules of the PCT.