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I have filed four provisional patent applications disclosing various and improving embodiments of the same invention. The second, third and fourth provisionals include new material, as well as all material of the preceding application.

I filed the four in a cumulative way so that I may have multiple priority date options to choose from according to how early the money for a non-provisional PCT application becomes available.

Question: Do I indeed have the freedom to claim any one of four possible priority dates for my non-provisional application, as long as I file within the 12 month deadline of the chosen priority date?

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  • Let me get this straight, you filed 4 patents on more or less the same invention without claiming priority to each other? Aren't you worried they might get used as prior art for each other? I know the US is kinda different there, but I don't think EPO will be that forgiving.
    – user18033
    Commented Jan 13, 2017 at 6:26
  • You can claim the various priority dates for relevant content only when the non-provisional is filed.
    – Luke Lisle
    Commented Jan 18, 2017 at 0:17

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Do I indeed have the freedom to claim any one of four possible priority dates for my non-provisional application, as long as I file within the 12 month deadline of the chosen priority date?

No. Your Convention application (such as a PCT application) must claim priority to (and therefore be less than 12 months after) the earliest application.

This is clear from the Paris Convention art 4(C)(2), which provides:

These periods [for claiming priority] shall start from the date of filing of the first application; the day of filing shall not be included in the period.

The only way around this is if the original filing was irrevocably withdrawn before any of the later ones were filed. This is provided by art 4(C)(4).

However, the 12 months for the additional improvements start with each new filing (since that is the first filing for those improvements).

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  • Thank you for that crucial information! I would have replied earlier but was not sure that 'add comment' was the way.
    – Luke Lisle
    Commented Oct 16, 2016 at 4:08
  • It means that I have far less time than I thought to raise the required funds and to file; but it will be done. It is amazing that this important information had escaped my attention though I have been reading on patent-related matters for many years.
    – Luke Lisle
    Commented Oct 16, 2016 at 4:31
  • The question by DonQuiKong has signaled the need for further clarification of the previous answer by Maca, who said: "However, the 12 months for the additional improvements start with each new filing (since that is the first filing for those improvements)." Does this statement mean that material disclosed in the first application expires on its anniversary date for the purpose of a non-provisional application, and becomes prior art in relation to material added later?
    – Luke Lisle
    Commented Jan 29, 2017 at 6:45
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    @DonQuiKong Normal unpublished applications are not prior art, since prior art requires publication (35 USC 102(a)(2)). When they are published, they are deemed to have a prior art date of their filing date (or their provisional date). But if they are not published for whatever reason, they don't count.
    – Maca
    Commented Feb 12, 2017 at 12:58
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    @DonQuiKong "Or can somebody else claim the same invention if the prov. Is dropped" - Yes, since there's no prior art.
    – Maca
    Commented Feb 15, 2017 at 0:54

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