Foreign Pattening

[listenup77]

California. Is the priority date for a US provisional patent application recognized by the PCT, when filing an international application? I have a US provisional patent application filed and before the year is up, I plan to file an international application with the PCT for foreign pattening (instead of first filing a non-provisional with the USPTO). I figure I have the priority date in the US for my product, before the year is up, I can file with the PCT which will give me an additional 18 months of protection before I file for the US and other foreign countries. I want to make sure that if someone else files a provisional or non-provisional application in any of these foreign countries, after the filing date of my US Provisional application and before my filing of a PCT application; that I am recognized as the first and owner of the product b/c of my US priority date. Does anyone have a clear answer or advice for this.Thanks.

 

[divgradcurl]

California. Is the priority date for a US provisional patent application recognized by the PCT, when filing an international application? I have a US provisional patent application filed and before the year is up, I plan to file an international application with the PCT for foreign pattening (instead of first filing a non-provisional with the USPTO). I figure I have the priority date in the US for my product, before the year is up, I can file with the PCT which will give me an additional 18 months of protection before I file for the US and other foreign countries. I want to make sure that if someone else files a provisional or non-provisional application in any of these foreign countries, after the filing date of my US Provisional application and before my filing of a PCT application; that I am recognized as the first and owner of the product b/c of my US priority date. Does anyone have a clear answer or advice for this.Thanks.

I see what you are trying to do here, but it isn't going to work. Yes, the PCT application does recognize the original provisional application as a priority date, but it only does so if you file something in the U.S. within the one year time frame. If you don't file your U.S. nonprovisional application before the provisional expires (one year after filing of the provisional), then it's as if the provisional application never existed, and you will lose the advantage of the provisional priority date. Filing of the PCT alone without also filing in the U.S. is insufficient to keep the provisional's priority date "alive" -- you need to either convert your provisional into a nonprovisional, or otherwise file another application that claims priority from the provisional within the 1 year time period.

If you did this, where you filed the PCT within one year but failed to file your nonprovisional within the one year, then the earliest possible priority date you would have would be the filing date of the PCT. Further, you can only claim the filing date of the PCT as your priority date in the U.S. if you actually designate another country for filing -- in other words, you can't just use the PCT to "extend" your need to file a nonprovisional in the U.S., you actually need to be using the PCT to file in multiple countries.

Read here for more info: http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_119.htm#usc35s119

 

[listenup77]

Got it, thanks. I also have another question. I filed a provisional application about a month ago. I now want to file a 2nd provisional application for the same product, but this time have a lawyer/agent write it up to make sure all ends are tied. Now, do I still keep the original filing date for the application I filed? Also, if in this 2nd application I add some new content (like something that improves my idea), will I still have the priority date for the original content and only have the date of the 2nd provisional application for the new content. I want to add some parts to my product, but I don't want to lose the earlier filing date from the 1st provisional application for the original content (invention/idea); is this possible when filing a 2nd provisional appl. for the same product/idea. Hope this makes sense, thanks.

 

[divgradcurl]

Got it, thanks. I also have another question. I filed a provisional application about a month ago. I now want to file a 2nd provisional application for the same product, but this time have a lawyer/agent write it up to make sure all ends are tied. Now, do I still keep the original filing date for the application I filed? Also, if in this 2nd application I add some new content (like something that improves my idea), will I still have the priority date for the original content and only have the date of the 2nd provisional application for the new content. I want to add some parts to my product, but I don't want to lose the earlier filing date from the 1st provisional application for the original content (invention/idea); is this possible when filing a 2nd provisional appl. for the same product/idea. Hope this makes sense, thanks.

Interesting question, and one that I am not sure I know the answer to. I suppose what you are trying to do is possible, although I've not, in my experience, ever seen anyone do anything like this. I don't think there is any reason why a nonprovisional application could not claim priority from more than one provisional application -- such an idea is at least alluded to in 37 C.F.R. 1.78(a)(5)(i), see http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_78.htm#cfr37s1.78.

However, from a practical standpoint, such an idea may cause more trouble than its worth -- as you correctly note, any "new matter" added to the second provisional will only get the priority date of the second provisional application. The more complex part is if there is any "overlapping" disclosures between the two provisional applications. Although the general rule is that the disclosure would be entitled to a priority date of the first application that disclosed the matter, it may not be possible to easily separate out what is entitled to what priority date.

Unless you have some overwhelming need to claim a particular, early priority date, it might be easier and less complicated to simply abandon your first provisional application and simply file a new provisional that contains everything you are interested in, and written by an agent or attorney. Alternatively, you could simply file the nonprovisional claiming priority from your first provisional and then add the new matter in the nonprovisional application -- that would probably be the cleanest way of maintaining your early priority date.