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A week back, I got a very good answer regarding PCT provisional protection.

I have a related question. Is it necessary for a national application to claim priority to the PCT application to get the provisional protection?

Let's just say,

I filed a US provisional in Jan 2019.

I filed a US non-provisional in Feb 2019 by claiming priority to the US provisional. This US non-provisional has only 1 claim.

I filed a PCT application in Jun 2019 by claiming priority to US provisional and non-provisional, but this one has 100 claims.

Since PCT application is not the parent of US non-provisional, does it gets the provisional protection available under PCT? i.e. For all 100 claims instead of 1 claim?

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The U.S., the EPO and other locations offer provisional rights related to the publication of patent applications. The rights vary, but the idea is that you can potentially recover royalties from others who make, sell, use, etc. in a way that infringe the claims you eventually get in an issued patent, the royalties essentially back-dated to the time of your publication.. Usually there is also some requirement that you have put them on notice. There is definitely the requirement that the issued claims are very close to the published claims.

In the answer you got before, a primary issue were rights under the EPO. If the U.S. application has no relationship to the PCT application, the provisional rights in question would relate to the single claim filed in the U.S. There might be time to amend the U.S. application to include other claims in time for that amended version to be what is published.

In the bigger picture, I would focus on the rights you hope to get under actual issued patents. For example, I would priorities getting valuable claims allowed over preserving the wording of the published claims.

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In your example, you cannot claim priority from the PCT in your US non-provisional because the PCT does not predate the US non-provisional. The only way you would be able to claim priority from the PCT is by filing a subsequent US non-provisional within the applicable priority year. Accordingly, if the subject-matter of all the claims of the PCT was disclosed in the PCT for the first time, you could claim priority during the 12-month period after the filing date of the PCT; if, however, the subject-matter of at least one claim of the PCT was disclosed in the US provisional and/or US non-provisional, you would have to claim priority from the PCT during the 12-month period after the filing date of the US provisional or US non-provisional (it depends on which of the two disclosed the subject-matter for the first time).

That said, the national law of some States may grant provisional protection when a patent application is published, sometimes if certain requirements are met. The provisional protection is based upon the claims as published. Therefore, even if you were to file a new US non-provisional claiming priority from the PCT, you would have to include the 100 claims in that US non-provisional; this means that it is irrelevant what is claimed in the PCT, it is the claims of the US non-provisional the ones that matter.

However, fortunately the PCT allows, by way of Art. 29, that an international application grants provisional protection:

"(1) As far as the protection of any rights of the applicant in a designated State is concerned, the effects, in that State, of the international publication of an international application shall, subject to the provisions of paragraphs (2) to (4), be the same as those which the national law of the designated State provides for the compulsory national publication of unexamined national applications as such." Be sure to read the rest of the Article too just so you have the whole picture regarding provisional protection. Therefore, as aforementioned, since provisional protection is a matter of national law, the provisional protection of a PCT may exist in some designated states if they so allow.

According to my understanding (kindly note that I am not a US patent attorney), in the US, international applications also confer provisional protection pursuant to 35 USC 154 (d):

"Provisional Rights.— (1)In general.—In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty or an international design application filed under the treaty defined in section 381(a)(1) designating the United States under Article 5 of such treaty, the date of publication of the application, and ending on the date the patent is issued". Be sure to read the whole part (d) of 35 USC 154 as well.

This would mean that your PCT will get you the provisional protection in the US, as long as the PCT designates the US (which it does unless you explicitly withdraw the designation), is published in English (or you provide a translation into English) and the publication of the international application (or the translation into English thereof) is submitted to the USPTO if the PCT was not filed with the USPTO. Also, you must give proper notice to the party that could be infringing the scope claimed in the PCT, and a US patent originating from the PCT (i.e. the US national phase is entered) is granted later on with identical or similar claim scope.

  • Thanks for another brilliant answer. Page 16 on this document says, The submission of the international publication or an English language translation of the international application pursuant to 35 USC 154(d)(4) must clearly identify the international application to which it pertains (37 CFR 1.5(a)) and, unless it is being submitted pursuant to 37 CFR 1.495, be clearly identified as a submission pursuant to 35 USC 154(d)(4). Otherwise, the submission will be treated as a filing under 35 USC 111(a) – Giri Aug 20 at 9:09
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    Thank you for kind words! The English translation is the one mentioned in 35 USC 154(d)(1)(B), whereas the "submission of the Int'l Appl." refers to (again, based on my undestanding) the fact that publication of the PCT is carried out by the International Bureau (i.e. IB). The USPTO does not know about the PCT unless it was filed with the USPTO (see 37 CFR 1.495(b)(1)); the IB only sends a copy of the Int'l Appl. to designated/elected offices at the end of the 30 months period, so in order to trigger the provisional protection you need to make the USPTO aware of the PCT by submitting it. – the Europeist Aug 20 at 11:04
  • I think it may be the case that you only get to act on provisional rights when a patent issues from the published application in question, not an unrelated appliation. It would be a very unusual case to have patent A issue and then get to take advantage of rights due to claims published only in patent B that has gone abandoned. – George White Aug 20 at 15:32
  • That is for sure. You must enter into the US national phase from the PCT and the USPTO must grant that US patent if you want to enforce the provisional protection rights. The invention claimed must be substantially identical to that of the published international application. That is the reason why amending the claims pursuant to Art. 19 PCT is useful in these cases, you may want to limit the subject-matter claimed in the PCT to allowable subject-matter. – the Europeist Aug 20 at 16:54
  • In the OPs case he has a U.S. patent on file that can not claim priority from the PCT. He has not mentioned any plan to also enter the National stage in the U.S. or file a bypass application in the U.S. - therefore the publication of the PCT will NOT result in any usable provisional rights in the U.S.- correct? He may have the wrong impression from your answer. – George White Aug 20 at 20:47

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