0

Let's say,

I filed a USPTO provisional in Jan 2019.

I filed a USPTO non-provisional in Jun 2019 by claiming priority to the provisional.

I'll file a PCT application in Dec 2019 by claiming priority to the provisional. But this PCT application contains "new matter". The PCT application is valid till Jun 2021. [i.e. 30 months from the provisional]

Now my question is, Am I allowed to include the "new matter" in the USPTO non-provisional via some amendments? How does one can claim priority when the amendment submitted 1 month before the PCT application expiry date? i.e. May 2021

Improve this question

1 Answer 1

Reset to default
3

No, there is absolutely no way to include anything new in any patent application anywhere, no matter what the reason is, once the application has been filed.

Your best option is to nationalize the PCT application in the US. You could claim priority to the PCT application, too, but in Europe that would be only valid for the new matter introduced there. I don't know if there is some trick with continuations in part or something like that in the US to have the non-prov. rmeoved from beeing prior art.

Improve this answer
1
  • 2
    Exactly. Entering into the US from the PCT would allow you to have a US non-provisional with all the matter. Another option would be to withdraw the current US non-provisional and file a new one within the priority year of the provisional application. And yes, you can claim priority from the PCT application as well, but only for the new matter pursuant to Art. 4C(2) of the Paris Convention, not from the former matter (and in this case you cannot restart the 12-month period of the provisional either) pursuant to Art. 4C(4) of the PC.
    – the Europeist
    Commented Aug 17, 2019 at 14:06

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .