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Old 02-25-2009, 07:02 PM
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Join Date: Nov 2008
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Red face

PCT priority claim to nonprov. w/ prov. but only for new matter. Okay?


If there is a 1st US Provisional and the PCT application misses the 12 mos. priority year deadline (measured from the Provisional filing) but a US Nonprov.
is filed within 1 year but includes a lot of additional matter and elements not in the US Prov:

1) Can PCT filing claim priority to US Nonprov. with respect to subject matter 1st included in Nonprov. (and not in Prov.) if filed within 1 year of US Nonprov.?
2) Can PCT filing also include material from provisional without priority assuming it is filed before publication of nonprov. with that same material?

With respect to #1 and priority claim to Nonprov.:

I am not sure how subject matter or "same subject" would be interpreted (at the national stages) and I am trying to reconcile Paris Convention Article 4(C)(4) (refers to "same subject") with Article 4(F) (refers to "elements").

[url=http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P83_6610]Paris Convention for the Protection of Industrial Property[/url]

It seems if under 4(F) the nonprovisional contains "elements" not in the provisional then it would give rise to a right of priority itself.

Article 4(C)(4):

(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

Article 4(F):

No country of the Union may refuse a priority or a patent application on the ground that the applicant claims multiple priorities, even if they originate in different countries, or on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed, provided that, in both cases, there is unity of invention within the meaning of the law of the country.

With respect to the elements not included in the application or applications whose priority is claimed, the filing of the subsequent application shall give rise to a right of priority under ordinary conditions.
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