publish date vs priority date in pct countries for novelty purposes

Question

I filed a provisional patent application "PPA" on January 1st, 2017 with the USPTO. Then I missed the 12 month deadline to file in the PCT to preserve my international rights in those participating jurisdictions. I did file a timely non-provisional application with the USPTO, but I have a few more weeks to pay the fees, so I could abandon that application if necessary, but would lose the priority date of the PPA. Then I missed the two month grace period. Ugh.

My IP has great value in both the U.S. and international markets, more than enough to justify the very large international fees.

I need to file in the PCT, and I obviously do not get the priority date of the PPA.

But here's the big question: For novelty purposes, does either the PPA, or the Non-Provisional Patent Application in the USPTO, count as prior art against me in PCT countries?

I found a reference in the European Patent Office rules (Article 54-3) that suggests only a European patent application would be "backdated" to it's priority date (there is notably no mention of applications in other jurisdictions).

If the USPTO application DOES count against novelty as of it's priority date, then I must abandon the priority date afforded by the PPA. I'm assuming (maybe I shouldn't) that I can still amend the non-provisional application to forgo the PPA priority date, and still keep the priority date of the non-provisional? If so, then I think (again, "think") I have 12 months from that date to file in the PCT?

Or, if the PCT countries determine novelty based on the publication date of applications in countries other than their own (in this case a U.S. application in any other PCT country), rather than the PRIORITY DATE of those applications, then I should keep the USPTO priority date of the PPA and file in the PCT asap?

As a follow up question: Assuming that the answer is not a favorable one, is there any way to move the priority date of a PPA forward (akin to moving a golf ball "no nearer the hole", so that I lose some priority over the art for patentability purposes, but gain the benefit of filing a timely application in the PCT?

Answer 1

In every country, prior art must be published (that is, available to the public). An expired provisional patent application which has not been used for priority is not available to the public: that is, even a motivated member of the public could not obtain a copy. Therefore it is not prior art, and you are correct in your thinking.

Incidentally, while I'm generally a little hesitant to disparage other members of the profession, that should probably be the last time you get advice from your current patent attorney: if they lack such fundamental knowledge, they are not an adequate representative.

As a next step, you should probably file a new PCT ASAP without any priority claims. This is particularly important before your US non-provisional publishes (around 18 months from the filing date of the provisional). As long as you have a pending non-provisional in the US, you wouldn't be able to have a valid priority claim*, so there's little point waiting.

In addition, I'm fairly sure it is possible to file a Convention application in some countries directly (that is, skipping the PCT stage), and validly claim priority to the non-provisional slightly after the 12 month Convention period. You would likely have an extra fee for claiming late priority though.

^{* Because the non-provisional was presumably filed claiming priority to the provisional application, the non-provisional is not the first-filed application for the invention. It can therefore never be used for priority outside the US (including for a PCT application), and there's no way to retrospectively cure this. If you abandoned the US non-provisional, you could then file a new application which is later usable for priority outside the US, but then you lose a LOT of priority time in the US.}