Timeline for patent life of a PCT application and royality thereof
Current License: CC BY-SA 3.0
15 events
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| Jan 18, 2017 at 7:23 | comment | added | chempatent1981 | To everyone who is interested to see an actual case, this one is quite complicated but a wonderful example of provisionals, in-part-continuations and terminal disclaimers. WO/01/27128 has two priority documents (US provisionals). The WO gave one US patents (US6414126). The US'126 was used to file an in-part continuation (US6515117) and the latter one was used as a priority document for WO/2003/099836. Note that because of this complex scheme, US6515117 has a terminal disclaimer and expires at the same date as US6414126. Feel free to add or correct staff, but I suggest you make a diagram! | |
| Jan 18, 2017 at 7:15 | history | edited | chempatent1981 | CC BY-SA 3.0 |
Further explanation of alternative in scenario b
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| Jan 18, 2017 at 7:12 | comment | added | chempatent1981 | @reindeer yes, exactly! The priority document is something like a special card in a cardboard game, which allows you to use it as the so-called effective date when you want to compare it to prior art. And of course, priority date is used for counting the time limits for national entries from PCT route. In my OR example above, I added, for clarification, that the US filing is a PROVISIONAL and therefore its final status is abandoned (and not published). So don't think of it as a normal filing (NP). | |
| Jan 18, 2017 at 2:57 | comment | added | KSR | @chempatent1981 thank you for an elaborate explanation. referring to this: "OR you can use the US filing as a priority document and file a PCT application on 31.12.2017. And then use the PCT application for US entry." So if I use PCT application for US entry, its 20 years period starts from the date I file PCT. Am i getting it right? And since, PCT has to be filed within 12 months of my 1st application filed, my own 1st NP application does not become a prior art but the 1st NP application could still be used to gain priority over any infringer who infringes after filing my 1st NP? | |
| Jan 17, 2017 at 9:34 | comment | added | chempatent1981 | @Maca, thank you. I am not sure it is a synonym in a formal way. Upon retrieving expiry dates from subscription-paid databases I usually see expiry dates 20 years from the lodging date and not the PCT filing date. I haven't found anything straightforward though... | |
| Jan 17, 2017 at 9:26 | comment | added | chempatent1981 | DonQuiKong I read the answer of Maca. As I read it he follows the same rules as I do: PCT filling date+20 years, priority date is not used in the 20-year term. Always check which document is used for filling, because a national patent filling can at the same time work as priority document for PCT but at the same time as normal national patent following its own path. | |
| Jan 17, 2017 at 9:22 | comment | added | Maca | @chempatent1981 In South Africa, "lodging date" is a synonym of "filing date" as it used elsewhere. That is, a patent application is filed in most countries, but is lodged in South Africa. | |
| Jan 17, 2017 at 9:15 | comment | added | chempatent1981 | And also, the 3o (or 31 for EPO) time limit for national entries is not considered as a "second" filing date for US and EP. I know that in ZA (South Africa) the 20-year patent term starts counting from the "lodging date", which by the way I am not sure what exactly is. But for US and EP I am quite sure, because I work with pharmaceuticals and I deal with expiry dates very often. | |
| Jan 17, 2017 at 9:10 | comment | added | chempatent1981 | Sorry for mispelling, I never noticed that until today (not native english speaker obviously). I alse changed the answer to scenario b, I hope I explained it better now. | |
| Jan 17, 2017 at 9:09 | history | edited | chempatent1981 | CC BY-SA 3.0 |
Further analyzing scenario b
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| Jan 17, 2017 at 7:26 | comment | added | KSR | It's only after 30 months of 1st filing date, that the application enters national phase, and from there it is considered a NP and it follows the same NP cycle phase: US NP -> 18 months -> Publication(open for objection)-> 18 months ->Patent granted ; My question is, patent lifecycle in this case is granted from NP filed internationally or from US NP filing date. | |
| Jan 17, 2017 at 7:26 | comment | added | KSR | also, my scenario 'a.' is specific about a NP filed in a foreign Country(non-US country), then how can filing date of NP and US filing date be same? my understanding is this: Provisional/NonProv -12months->PCT-6months->WO Publication->12 months -> national phase; | |
| Jan 17, 2017 at 7:17 | comment | added | user18033 | patents.stackexchange.com/a/17059/18033 This seems to say different, saying the first filing date counts for the 20yrs. I'm not sure which is right though. | |
| Jan 17, 2017 at 7:10 | comment | added | KSR | do you mean filing date when you mention 'filling date'? | |
| Jan 17, 2017 at 7:07 | history | answered | chempatent1981 | CC BY-SA 3.0 |