Publication and Absolute Novelty: Pub. before Filing Date but after Priority Date

[patatty30]

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

In short, is it the actual filing date or the priority date of a PCT or foreign app that matters with respect to an intervening publication (before filing date, after priority date)?

I am not that familiar with non-US practice and want to know about the
effects of publication (i.e. of a US nonprov. or US CIP) before filing a
PCT or foreign application.

Can the publication of a US nonprov. or US CIP be used against
a PCT or foreign filing even if the PCT or foreign filing claims priority to the
application on which the publication is based and thus has a priority date
that is before the publication date?

i.e.
chronological sequence of events:
1) US CIP filed in US
2) US CIP publishes (publishes quickly b/c 18 mos. could already be up from the earliest app. in the chain at the time of filing the CIP)
3) PCT app. filed within 1 year of US CIP in (1) above, claiming priority to US CIP with respect to new matter in the CIP not in the earlier apps

Is this a problem for PCT because the new matter was published when CIP published?
Or, is this okay because PCT claims priority to the CIP?

In short, is it the actual filing date or the priority date of a PCT or foreign app that matters with respect to an intervening publication (before filing date, after priority date)?

Thank You!

 

[divgradcurl]

The general rule is that the priority date is the date for determining whether or not a particular publication impacts absolute novelty or not. So, a PCT correctly claiming priority to an earlier-filed (and even published) U.S. application would not have a problem with the intervening publication of the earlier U.S. application.

However -- this assumes that the original U.S. application was filed by persons having citizenship or residence in the U.S. The use of the priority date in the PCT allows a U.S. citizen to file an application internationally under essentially U.S. "first to file" rules. But this system is not an end-around the absolute novelty requirements of other countries. If, for example, a UK citizen filed an application in the USPTO, then decided to go the PCT route, he would not be able to claim priority back to the original U.S. application, because the USPTO is not a proper receiving station for a UK PCT application -- he would have to file him PCT application in the UK patent office, and would only get an international filing date based on the UK filing, and could be caught if the U.S. application were published prior to the UK filing.

But for a U.S. citizen or U.S. resident filing in the USPTO, you can claim priority back to an earlier national application, and your "international filing date" is your priority date.

 

[patatty30]

Thanks. You are always 1st to respond to my posts.
This confirms what I found elsewhere.

Good point about the US nonprov. being useable as priority for US citizens or US residents only. Many of my clients are US residents but not citizens so this would still be okay?
I am not very familiar with PCT practice but interested in learning more quickly and plan to attend seminars soon.
So, with the UK example, does PCT app. have to filed in a receiving office of a country of which an inventor is a resident or citizen?
So UK resident and citizen had to file his PCT in UK receiving office despite have a few other nat'l applications filed in other countries (but not so many to make PCT not worthwhile).
Then, in the UK receiving office he could only claim priority to UK nat'l application despite potentially having a few other nat'l applications filed earlier but still within 1 year?

 

[divgradcurl]

Good point about the US nonprov. being useable as priority for US citizens or US residents only. Many of my clients are US residents but not citizens so this would still be okay?

Yes. See 35 USC 361.

So, with the UK example, does PCT app. have to filed in a receiving office of a country of which an inventor is a resident or citizen?

I assume so. I don't actually know, I only know that the USPTO can only accept PCT applications from U.S. citizens or residents.

So UK resident and citizen had to file his PCT in UK receiving office despite have a few other nat'l applications filed in other countries (but not so many to make PCT not worthwhile).

That's my understanding. My main point was that a PCT filed in the US allows a US inventor to essentially get around the absolute novelty requirements of the EU and other countries, because in the US you can claim priority back to a provisional, and, in any event, have the 12-month 102(b) period to file. However, a foreign person cannot get around the absolute novelty rules in their own country by filing a PCT in the US -- that's not allowed.

Then, in the UK receiving office he could only claim priority to UK nat'l application despite potentially having a few other nat'l applications filed earlier but still within 1 year?

Presumably that would be the case, although I don't actually know -- it would depend on UK patent law.

My only point was simply to point out that the PCT isn't really a way around absolute novelty, it's just a way for a US filer to not have to abide by the absolute novelty rules of other countries.