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A competitor of mine has filed a PCT application recently. They operate in Pakistan and Canada.

I would like to challenge this PCT application.

The timeline is my concern here:

  • 2013-11-04: They filed a Pakistani application.
  • 2014-10-16: They filed a United States application, claiming priority to the Pakistani one. It was granted quickly.
  • 2015-10-13: They filed a PCT application claiming priority to the United States application, rather than the earliest one (Pakistani).

This is alarming as my opponent has not even mentioned his Pakistani application in the PCT application.

What can be done to challenge this PCT application? How can we challenge the application simultaneously in all designated countries, keeping in mind that the application is still pending?

It shall be noted that Pakistan is not signatory to PCT. Because Pakistani applicants are not eligible to file PCT applications, this competitor has shown his canadian residential address in the PCT application. The United States application has his Pakistani residential address.

  • Do the Pakistani application, the US application and the PCT application all have the same content? – Maca May 11 '16 at 10:54
  • Also, were any of the Pakistani application, the US application or the US patent published before the PCT was filed? – Maca May 11 '16 at 10:59
  • Yes, the Pakistani application, US application and the PCT application all have the same content, however the Pakistani application is still pending approval/acceptance from Pakistan patent office. – Hira Zaheer May 13 '16 at 12:27
  • Pakistani application's title was published in the official gazette prior to filing PCT whereas complete US application was publicly available on espacenet, google patent search, etc prior to filing of PCT application. – Hira Zaheer May 13 '16 at 12:29
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You can send information about "2013-11-04: They filed a Pakistani application" to PCT International Bureau via https://pct.wipo.int/LoginForms/epct.jsp

PCT international bureau may consider the reference and may issue negative evaluation in international search report, but it is not binding to countries specified at PCT application.

In order to "reject" or "invalidate" your competitor's patent applications, you must send the information to patent offices of "all the countries" in which you want to make the patent invalid.

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If Pakistan is non-signatory to PCT, then how can it be of importance to disclose to PCT about the application submitted in Pakistan. Now take this as; if there is any clause in PCT that require disclosure of any application submitted before in any country "INCLUDING NON-SIGNATORY TO PCT", then it can be of any value. Otherwise, if it only requires information about prior application in PCT signatory countries then the Pakistani applicant has already done by referring to US patent application... According to international law, PCT 'jurisdiction' only constitute the countries which agrees to terms and conditions of PCT, and if PCT does not provide protection to non-PCT states then it has no right to know about any application submitted in these countries...

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    I believe this answer is incorrect. According to Article 8 of the PCT Treaty, the priority that a PCT application may get from a previous application is governed by the Paris Convention. The Paris Convention says that priority may only be from the first filed patent application on the subject matter. Pakistan is under the Paris convention and it was the first filed application. The U.S. was not the firtst filed application and the PCT was filed after the one year anniversary of the Pakistani application. – George White Jan 12 at 20:46
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The PCT application is not entitled to priority from the U.S. application and the publication of the U.S. application is novelty destroying prior art to the PCT application.

\According to Article 8 of the PCT Treaty, the priority that a PCT application may get from a previous application is governed by the Paris Convention. The Paris Convention says that priority may only be from the first filed patent application on the subject matter. Pakistan is under the Paris convention and it was the first filed application. The U.S. was not the first filed application so the priority claim is invalid. The PCT was filed after the one year anniversary of the Pakistani application so no priority claim to it can work.

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