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I am looking to use my UK-B application below to file a new PCT-B so that I do not have to prove novelty and inventiveness over the PCT1.

1)  UK-A filed on 05/19 now withdrawn without being published
2)  PCT-A filed on 05/20 claiming priority from UK-A
3)  UK-B filed on 06/20
4)  PCT-A published on 07/20

Is there really a way to do that?

I have been told that even if I withdraw my PCT-A priority claim over UK-A and even if I abandon my PCT-A and even if I claim priority for my PCT-B over my UK-B, I will still have to prove novelty and inventiveness over the PCT-A, but I do not really understand it.

Can anyone advise please?

PS: I am interested in EU and US mainly.

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  • We would need to know whether any matter disclosed in UK-B is disclosed in UK-A or PCT-A, and whether you are seeking protection for it or not. UK-A is probably public even if you withdrew it, if you validly claimed its priority in PCT-A and furnished the certified copy of UK-A, then UK-A is available in the public file of PCT-A (you can take a look yourself at PatentScope).
    – the Europeist
    Jan 17, 2021 at 20:18
  • @theEuropeist thanks, yes UK-B contains matter that is contained in UK-A and PCT-A. I am seeking protection for both the new UK-B content and the UK-A/PCT-A content. The problem is that with UK-B, I want to claim a broader concept than UK-A/PCT-A, that's why I wanted to proceed with the UK-B as a single patent instead of a combination of UK-B and UK-A/PCT-A. I am worried that UK-A/PCT-A will restrict my ability to broaden the concept with UK-B as I will have to prove novelty and inventiveness. Any idea?
    – PCT-user
    Jan 18, 2021 at 14:23

1 Answer 1

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Filing another application (say PA) now and claiming priority from UK-B will result in the following effective dates:

  • (1) For PA's matter disclosed in UK-B for the first time: the filing date of UK-B
  • (2) For PA's matter already disclosed in any of UK-A and PCT-A: the filing date of PA

This means that matter (2) has the problem of UK-A and PCT-A disclosures, which are prior art for PA, whereas matter (1) does not have that problem.

If you were to enter into the European regional phase from PCT-A (say EP-A) and PA is or becomes a European patent application (say EP-B) at some point in time, whatever you claim in EP-B has to be novel over UK-A/PCT-A, so it must be novel over matter (2). This is because, at the EPO, EP-A is comprised in the state of the art but for the novelty requirement only (cf. Art.54(3) EPC). Not sure if a similar provision exists in the US.

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