1

A utility patent application was written and filed in April 2019 with the USPTO. The inventor seeks additional patent rights in ES, DE, FR, UK & NL. The EPO website indicates:

 A European patent application consists of:

    a request for grant
    a description of the invention
    claims
    drawings (if any)
    an abstract.

Does the Non-Provisional Patent Application (submitted to the USPTO) satisfy the European application elements described above? Naturally, the request for grant form would not be included in the NPA.

Updates:

  • Invention has not been sold / disclosed
  • Inventor's dual EU-US citizen is unclear because of evolving immigration law
  • Provisional Application was filed exactly one year before NPA
  • NPA was filed USPTO pro-se
2

The U.S. application should have all of those elements but the U.S. application is not an EPO application. The content can be the same or different but a counterpart EPO application will be a new application filed with the EPO that claims priority to the U.S. application under the Paris Convention. This only works if the utility application is the first filed application on the subject matter. Since it was proceeded by a provisional application you can only use the provisional for priority. Since the provisional was filed over a year ago you can not get any priority from anything. Unless the information has been kept secret all this time you can’t go any further. Your deadline to file everywhere and get priority was the same deadline under which you filed the NPA.

If the application has not published and you have not disclosed the invention and no one else has disclosed or filed in the meantime, then you do not need priority.

Note - to be a pro se applicant in the EPO you need to be from an EPO country. I'm not sure about the citizen/legal resident details but if you do not qualify in an EPO country you must have an EPO agent or attorney do everything besides the initial filing.

| improve this answer | |
  • Your last note is particularly important. I’m assuming that means a US applicant will need to hire an attorney. – Eric Shain Jan 23 at 20:10
  • Absolutely - I'm not sure about the citizen/legal resident details but if you do not qualify in an EPO country you must have an EPO agent or attorney do the filing. – George White Jan 23 at 20:31
  • Perhaps you could emphasize this in your answer. – Eric Shain Jan 23 at 23:52
  • Filing a European patent application can be to accord a filing date can be done without a professional representative (even if not from an EPC contracting state), but all steps from then on to get a patent granted need to be taken by a professional representative. For instance you could file the application say in Japanese, and if you do not furnish the translation into EN, DE, FR simultaneously, then the professional representative has to file the translation. – the Europeist Jan 24 at 7:08
  • 2
    Thanks I edited my answer – George White Jan 24 at 16:32

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