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My current understanding:

If a PCT application was filed before, but published after, the filing of a different European patent application, then the PCT application may be considered a 54(3) EPC document (i.e. Only novelty destroying prior art), ONLY IF the PCT enters the European phase (fees paid and translations provided) within 31 months.

My question:

Could the EP application be allowed to grant if the PCT application has not yet entered the European phase (i.e. is currently not a 54(3) document but could become one in the future), but would appear to be novelty destroying?

Also if such a case arose, what would be the smartest course of action for the inventor of the EP application?

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First of all, your understanding of 54(3) EPC seems to be right. More information can be found in the guidelines for examination where one can also read that the EP application has to be valid (e.g. not withdrawn) at the date of publication to qualify as prior art for 54(3).

Could the EP application be allowed to grant if the PCT application has not yet entered the European phase (i.e. is currently not a 54(3) document but could become one in the future), but would appear to be novelty destroying?

This, therefore, seems to be a correct interpretation. In theory. In practice, (almost) no european patent application will make it to a grant in less than 31 months. And if the examiner knew about an unpublished application (afaik they can search at least unpublished european apps and I think PCT too - plus the PCT will get published prior to the 31 months so they can find it then even if not), they'd simply wait.

Assuming however, some prior art did turn up after the grant - the course of action would be the same as for other prior art found after grant - do nothing. Know that the patent could be challenged and include that in a possible litigation strategy, other than that, you have a valid patent unless proven otherwise.

All in all, examiners never find all prior art, so the few cases where this particular possibility for hidden prior art might be the reason, there's really no important difference to cases with any other reason.

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  • Thanks for such a complete response DonQuiKong. I agree that the time frame makes it unlikely, but it's interesting to know that the Examiner may simply wait. – Oceansyawn Jul 26 '17 at 8:28
  • Regarding a litigation strategy (you'll have to forgive me, I have little experience in this), is it possible to delay the grant of the patent until said 31 months has passed? My thought process being that a competitor who holds the PCT application may only consider entering the European phase upon hearing about the grant of the EP patent. – Oceansyawn Jul 26 '17 at 8:37
  • @Oceansyawn if indeed you were to be in that situation, delaying a grant is easy in most cases. Simply add a new claim and let them reject that, gives you around 1-2yrs already and you could do that more than once. There are probably other (better?) ways an attorney with some experience might know. I'm not sure what happens if you are already very close to grant or have received an intention to grant, but an anonymous third party observation will probably delay the process too. In the event I'd recommend asking your attorney, they'll have no problems delaying the grant. – DonQuiKong Jul 26 '17 at 8:43

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