1

I still can't able to understand how priority date works.

Let's say I filed a provisional patent in Jan 2019. That specification contains nearly 95% of the real invention.

In Jun 2019, I filed one more provisional patent, it adds another 3% of the invention. We are at 98% now.

Finally, I file a non-provisional in Dec 2019 and it contains, all 100% of the invention.

Now when claiming priority, I would obviously go for the Jan 2019 date. But what happens to the 3% content disclosed in Jun 2019 and 2% content disclosed in Dec 2019. Just to be clear, these 5% of the content will be claimed in claims.

Do they all have Jan 2019 date as priority?

2

In the first sentence of the non-provisional you claim priority to both of the provisionals. During the prosecution of the application and any divisionals or continuations you will have specific claims that will, most probably, meet with rejections based on "prior art" cited by the examiner. The examiner initially views anything prior to your non-provisional filing date as legitimate prior art. Say one of the references was dated after one of your provisionals. This is when it becomes relevant that you filed the provisional at all.

It will be your job to show, in your response to the rejection, that the relevant information/teaching that was contained in the cited reference was sufficiently covered in your provisional. If so, the cited reference is excluded as a prior art.

  • Thanks for the neat explanation :-) – Giri Jul 12 at 19:36
  • Can you fix the typo? prosection => prosecution – Giri Jul 13 at 9:54
3

Just to clarify this question about priority dates from a European patent application perspective. Each and every claim of a European patent application has one or more effective dates (yes, a single claim may have more than one effective date).

In this case, say P1 is the filing date of the first provisional application, P2 the filing date of the second provisional application, and P3 the filing date of a European patent application or an international application. The effective date of each claim will be determined, as pointed out by George White (much) earlier, by the subject-matter claimed and whether said subject-matter is completely disclosed (either explicitly or implicitly) in one or both priority applications, or only in the EP/PCT application. If the claimed subject-matter is disclosed in both priority applications, then the claim has the earliest date as effective date, i.e. P1.

Concerning the multiple effective dates in a single claim, that may occur when an OR clause is present in the claim, which results in two different embodiments. There are two situations in which this usually occurs:

  • An airplane comprising: A, B, C, and two or three engines.

By way of example, if the first provisional application disclosed an airplane with A, B, C and two engines, then that embodiment has P1 as effective date; if no provisional application disclosed an airplane with A, B, C and three engines, then that embodiment has P3 as effective date. This, in essence, means that prior art documents with publication date up to (but not including) P3 can be cited against the latter embodiment, but if the publication date is later than P1, then it cannot be cited against the former embodiment.

The second situation is like this one:

  1. An airplane comprising A.
  2. The airplane of claim 1, further comprising B.
  3. The airplane of any one of claims 1-2, further comprising C.

Claim 3 effectively claims two different embodiments because the dependency has an implicit OR clause: (i) with A+B+C [depending upon claim 2, in turn depending upon claim 1], and (ii) with A+C [depending upon claim 1]. Now, if the second provisional application disclosed an airplane with A+B+C, then (i) has P2 as effective date, and if the first provisional application disclosed an airplane with A+C, then (ii) has P1 as effective date -but of course, if embodiment (i) was disclosed in the first provisional application, then the entire claim has P1 as effective date.

Following the above example, you could have, for instance, claim 1 with P3 as effective date, claim 2 with P1 as effective date, and claim 3 with P1 and P2 as effective dates.

Finally, at the EPO (i.e. under the European Patent Convention) it is not enough that features A, B and C are disclosed in, say, the first provisional application, but these features must be disclosed as being part of a same embodiment (i.e. it is directly and unambiguously derivable for the skilled person that an embodiment of an airplane with A+B+C is disclosed in said document).

  • Thanks for the answer. It's very helpful. – Giri Aug 9 at 23:45

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