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  #1  
Old 02-18-2009, 07:14 PM
Junior Member
 
Join Date: Nov 2008
Posts: 12
Red face

can you file a PCT cont. or PCT "CIP" from another PCT?


What is the name of your state (only U.S. law)? California

I know that there is 1 year from the earliest priority date (whether that be a US prov., US nonprov. w/out prov., or a foreign app.) in which to file a PCT
application.

My question is after you file a PCT what are your options for expanding that
initial PCT application. I understand US options but I'm concerned about
international and foreign options. Specifically:

1) If the 1st PCT is the 1st application in its chain (doesn't claim priority to
anything) could you file a 2nd PCT application within 1 year from 1st PCT and
claim priority to 1st PCT in 2nd PCT?

2) If the 1st PCT is not the 1st application in its chain (say it claims priority to a US nonprovisional w/out corresponding provisional) could you flie a 2nd
PCT application within 1 year from 1st PCT and claim priority to 1st PCT with respect to material in 2nd PCT and 1st PCT that was not also in US nonprov.?
(This would be based on the reasoning that earliest priority date for the material in the 1st PCT and not in US nonprov. is really just the filing date of the 1st PCT so 2nd PCT is within 1 year of that.)

I've read that you can file a PCT that claims priority to a US CIP with
respect to the new matter (new from the earlier apps to which CIP itself claims priority) if filed within 1 yr of CIP.
Where I read this:
[url]http://www.intelproplaw.com/ip_forum/index.php?topic=8413.0[/url]
[url]http://www.intelproplaw.com/ip_forum/index.php?topic=7701.0[/url]
I think the above situation in #2 is analogous except instead of the US CIP as the middle app. we are dealing with a 1st PCT.
Is this correct? Does it extend to #2 such that PCT2 can claim priority to a
PCT1 acting like a CIP?

However, at 1st glance I thought this conflicts with what I have heard about the reason you cannot file a PCT more than 1 year after the earliest application in a chain. I have heard if the earliest application is pending at the time the middle application is filed and the PCT is filed beyond 1 year from the earliest application it cannot claim priority to the middle application. Maybe this was just a generalization without taking into account new matter and separate priority dates for different parts of an application?
Where I read this:
[url]http://www.intelproplaw.com/ip_forum/index.php?action=printpage;topic=10480.0[/url]

Any clarification or confirmation would be greatly appreciated. After just re-reading the sites I cited it looks like priority claims in a PCT to applications other than the 1st app. in a chain are okay but only with respect to subject matter first appearing not more than 1 yr before PCT filing date ("new matter" w/ respect to 1st app. in chain).
Right?

Thank You so much for your time!
  #2  
Old 02-19-2009, 02:22 PM
Senior Member
 
Join Date: Jul 2002
Location: Bay Area, CA
Posts: 7,515
Maybe this is what you are looking for:

[url=http://www.uspto.gov/web/offices/pac/mpep/documents/1800_1817_02.htm#sect1817.02]1817.02 Continuation or Continuation-in-Part Indication in the Request [R-7] - 1800 Patent Cooperation Treaty[/url]

[url=http://www.uspto.gov/web/offices/pac/mpep/documents/1800_1895.htm#sect1895]1895 A Continuation>, Divisional,< or Continuation- in- Part Application of a PCT Application Designating the United States [R-2] - 1800 Patent Cooperation Treaty[/url]
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