2

My initial reaction to the above question was yes. However, consider the following - if DE, JP and KR have problems with earlier applications, is the second PCT considered to supersede the first? Does a second PCT automatically mean that the first PCT is deemed withdrawn in these countries? The Euro-PCT guide seems to suggest it is automatic, irrespective of new subject-matter.

“According to the national law of these states, the filing of an international application which contains the designation of that state and claims the priority of an earlier national application filed in that state (for Germany: for the same kind of protection) will have the result that the earlier national application ceases to have effect, with the same consequences as the withdrawal of the earlier national application”

I'm not asking for the community to look all this up, I just wanted to demonstrate that I have given this thought and would like an opinion from those here.

  • I suspect this may require a consideration of the domestic law of each of those countries. Hopefully someone speaks German, Japanese, and Korean. – Maca Jan 26 '18 at 21:25
  • I'm not sure I understand. You want to file a second PCT to claim priority from the first? Why? – DonQuiKong Jan 27 '18 at 16:03
3

As you have found, the patent laws of Germany, Japan and Korea provide that a later-filed international application that claims priority of an earlier filed national application has the effect of essentially withdrawing the earlier filed application. To address this, the PCT Request form has boxes to check for each of these countries that "non-designate" the country as one of the countries the PCT application bundle includes. Originally you had to affirmatively designate countries on your PCT Request form, now it is automatic that all PCT member countries are designated - unless one or more of those boxes is checked. This is the full text of the explanation given by the EPO -

Non-designation for reasons of national law 117 For reasons of national law, check-boxes in Box No. V of the PCT request form provide for exceptions to the otherwise automatic designation of Germany (DE), Japan (JP) and the Republic of Korea (KR). Crossing the check-box for these designations is not considered as withdrawal of a designation, but as non-designation of the state(s) concerned. R. 4.9(b) PCT WIPO PCT Guide 5.053 118 According to the national law of these states, the filing of an international application which contains the designation of that state and claims the priority of an earlier national application filed in that state (for Germany: for the same kind of protection) will have the result that the earlier national application ceases to have effect, with the same consequences as the withdrawal of the earlier national application. To avoid this effect, the appropriate box must be crossed (Box No. V PCT request form). More information on so-called "self-designation" can be obtained from the national patent offices concerned.

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