PCT based on Provisional

[iassaf]

I have filed a provisional with the USPO last December.

1- Can I file an application with the PCT claiming the priority date of the Provisional without applying for a Non-Provisional with the USPO first?
2- If yes, this would give me 18 more months to file with the USPO (based on the PCT application). Correct?

Thank You,

[divgradcurl]

1- Can I file an application with the PCT claiming the priority date of the Provisional without applying for a Non-Provisional with the USPO first?

Yes, but -- if you don't file a nonprovisional claiming priority to the provisional within 1 year of filing the provisional, the provisional application goes abandoned, and you lose the priority date. An international application under the PCT does not take the place of a nonprovisional application filed in the USPTO for purposes of retaining the provisional priority date.

2- If yes, this would give me 18 more months to file with the USPO (based on the PCT application). Correct?

Since the answer is no, well, no. A provisional expires after 12 months, period -- the only way to retain a priority date based on a provisional application is to file a nonprovisional claiming priority while the provisional is still valid (or converting the provisional to a nonprovisional).

[iassaf]

1- But if the PCT is filed claiming the provisional patent, it preserves the provisional priority date. Correct?

2- I have 18 months to file with the USPO claiming the PCT (which preserves the provisional date). Consequently, if I file during the 18 months (of the PCT validity), I will preserve the original provisional date. Correct?

Thanks,

[divgradcurl]

1- But if the PCT is filed claiming the provisional patent, it preserves the provisional priority date. Correct?

Generally yes. But U.S. Patent law -- specifically 35 U.S.C. 119 (a) and (e) -- specifically require that a nonprovisional patent application claiming priority to the provisional patent be filed within 12 months, or the national stage application be filed within 12 months of its international priority date. You can't get extra time to file by going through the PCT.

Also, remember that you will likely be denied priority to the provisional application under the PCT unless the provisional includes claims, which are not required for a pure U.S. application.

2- I have 18 months to file with the USPO claiming the PCT (which preserves the provisional date). Consequently, if I file during the 18 months (of the PCT validity), I will preserve the original provisional date. Correct?

No. The PCT does not allow you to get around the 12-month deadline.

[iassaf]

- At this stage, the US non provisional patent will be claiming the PCT patent not the provisional patent. As long as the PCT preserves the provisional priority date, I should be OK. Right?

- Are you sure the PCT won't allow claiming the provisional? If claims are required, do the claims in the PCT patent have to be the exact ones in the provisional patent?

Thanks,

[divgradcurl]

- At this stage, the US non provisional patent will be claiming the PCT patent not the provisional patent. As long as the PCT preserves the provisional priority date, I should be OK. Right?

You are missing the point. Did you read the statute I pointed you to in my previous post? U.S. law simply will not allow one to circumvent the filing deadlines for a provisional patent by filing a PCT application.

Second, I think you are misunderstanding the role of the PCT. The PCT is not a separate application that can, on its own, become a patent -- it simply allows one to file in individual countries in a predictable manner without worrying about doing it all at once to preserve a priority date. But each individual national stage application is going to be subject to its own national laws.

In the case of a U.S. national stage application, under 35 U.S.C. 119, if the national stage is not entered within 12 months of the PCT priority date, the priority date of the provisional is lost, and the PCT filing date is the new priority date. In the case of a PCT claiming priority to a provisional, the priority date is the filing date of the provisional application. Under 35 U.S.C. 119, if the national stage application in the U.S. is not received within 12 months of the PCT priority date -- which is the filing date of the provisional application -- the priority date is lost, and the filing date of the PCT application itself becomes the priority date.

There simply is not a way to get around the 12-month time limit for a provisional application simply bu going the PCT route.

- Are you sure the PCT won't allow claiming the provisional?

A provisional application can be the basis for a priority claim for a PCT application -- but U.S. law requires that the U.S. national stage be entered within 12 months, or the priority date is lost.

If claims are required, do the claims in the PCT patent have to be the exact ones in the provisional patent?

Claims are not required for the PCT priority claim per se, but are generally required in order to enter the national stage of the EPO and most European countries.

[iassaf]

Thanks for the input. One more question.

Lets say the 12 months from provisional priority date had passed (but I applied for a PCT claiming the provisional before it expired). As you explained, when I apply with the USPTO, the priority date will become the PCT filing date.

- If I had public exposure right after I filed for a provisional (more than 12 months ago), would the USPTO denie me a patent?

Thanks again,

[divgradcurl]

Originally Posted by iassaf

Thanks for the input. One more question.

Lets say the 12 months from provisional priority date had passed (but I applied for a PCT claiming the provisional before it expired). As you explained, when I apply with the USPTO, the priority date will become the PCT filing date.

- If I had public exposure right after I filed for a provisional (more than 12 months ago), would the USPTO denie me a patent?

Thanks again,

So long as the nonprovisional application is filed (i.e., national stage entered) within 12 months of the PCT filing, and the PCT was filed within 12 of the first public exposure, you should be okay.

If all you are trying to do is buy yourself more time to file in the U.S., you could just let your current provisional go abandoned, and file another provisional just prior to the 12-month bar after first public disclosure, then you would get another year to file your nonprovisional.

[patatty30]

Based on reading the cited sections of 35 USC 119(a) and (e) that you provided ((e) or which I found more helpful) I don't understand your assertion that the national stage must be entered within 12 mos. of int'l priority date (provisional date).

119(e) refers to patents filed under 363 and 363 doesn't say anything about entering national stage. It is titled "International application designating the United States: Effect." It seems to me that under the PCT the 363 Int'l Application designating US has to be given same effect as US Nonprov. nat'l application as it is filed without national stage entry.

"363:
An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office except as otherwise provided in section 102(e) of this title."

Are you sure the national stage has to be entered 12 mos. from earliest priority date or just that the int'l application has to be filed within 12 mos.?

What is your source for the assertion that national stage must be entered 12 mos. from earliest date? I can only find support for int'l filing within 12 mos.

[divgradcurl]

I reread the various sections, and I think you are right -- it's not the national stage application that fixes your rights, it's the PCT application designating the U.S. that fixes the right to priority from a provisional. A PCT on it's own doesn't look like it will do it, but one that designates the U.S. will.

OP, if you are still reading this, you were more correct than I was here, I apologize for that.

[patatty30]

I am at PCT seminar right now and just double-checked with someone who previously worked in USPTO PCT Dept.. She said I was correct.
And now, US is automatically designated upon filing PCT application, as are all countries unless they are expressly excluded.
Under 363 even by following the exception to 102(e) all that would mean is that the PCT application designating US is treated as a national application (i.e. US nonprov.) except for purposes of 102(e) prior art in which case it is only treated as such if it additionally complies with the following:
(i) publication in English.