3

I heard a EP file an application based on US provisional if the US provisional file a US application. so i will explain my doubt based on my example.

A provisional patent(PP1) file on 1 jan 2016 and US application files based on PP1 on 30 Dec 2016. can EP application takes the priority from PP1 (wherein EP files on 30 Nov 2016).

Note: provisional application has 1 claim.

3

The legal basis for claiming priority in the EP is Article 87. Paragraph 1 reads

"Any person who has duly filed, in or for (a) any State party to the Paris Convention for the Protection of Industrial Property or (b) any Member of the World Trade Organization,

an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application."

So there are the following conditions to be met: 1) country or State that falls within the above definition (member of PC or WTO); 2) same person OR successor in title; 3) 12 month period; 4) first patent application (or utility model etc); 5) the same invention.

The most trivial conditions are the same person OR successor in title and the first patent application aka "first filing". So a US provisional IS a first filing, while an continuation-in-part is not. Also, a US normal filing, stemming from a US provisional is not a first filing and cannot be used to claim priority.

In your example provisional PP1 (01.12.2016) can be used to claim priority whithin the 12 month window (and 30.11.2016 is there), but the US appl. filed on 30.12.2016 cannot. Mind that, the response to a deficient priority claim might not be instant, the EPO performs an initial formalities check (file No, dates, copies) and beyond that it's the examining division's responsibility to declate a priority claim invalid. So if someone has claimed an US continuation-in-part for claiming priority, he will deal with this in the substantive examination phase.

  • thanks for you information. but i m not convinced about US application one. – ASHU VERMA Mar 23 '17 at 11:39
  • You are not convinced that it CAN be used for priority or that it CANNOT be used for priority? By "US application one" you refer to the one with F.D. 30.12.2016, right? – chempatent1981 Mar 23 '17 at 11:45
  • thanks for you information. but i m not convinced about US application one. I m sure that Us application can be filed as given example in my question . just now, I found a patent for my question: EP2441824A1(claims priority from US2010393550P - 2010-10-15) which is filed on 2011-05-18 and US application files(US20120135910A1) on 10/13/2011 – ASHU VERMA Mar 23 '17 at 11:46
  • I can't agree with you. The A1 publication reads in field (30): Priority 15.10.2010 US 393550 P. Had there been another priority claim, it should be written in the same field. This is the only document from which priority is claimed. The US20120135910 stems from the provisional as well and this is the only link with the EP application. – chempatent1981 Mar 23 '17 at 11:59
  • Hmmm, maybe I did not get your question right? US provisional can be used to claim priority for EP and at the same time serve as a basis for a regular US filing. You can also use it to file a PCT application. – chempatent1981 Mar 23 '17 at 12:25

Your Answer

By clicking "Post Your Answer", you acknowledge that you have read our updated terms of service, privacy policy and cookie policy, and that your continued use of the website is subject to these policies.

Not the answer you're looking for? Browse other questions tagged or ask your own question.