1

I disclosed a feature in a priority application 2 years ago but it was not included in my finally pursued application. Now the priority and the pursued application have been published. Is it possible to patent this feature? I was thinking something like a divisional application but I am worried that it may not be possible to claim it since it has not been included in the final application.

1
1

This is definitely possible as it relates to the US -

(b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or § 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).

If the priority claim was not present on the filing day then there must be a petition before the material from the priority document can be amended into the application.

0

Other than in the US (see George White's answer), you cannot if the priority application is not pending. The finally pursued application does not disclose the matter, hence you cannot protect it.

8
  • I assume the OP can’t file a new application for the feature since the priority application represents prior art. Correct? – Eric S Jan 24 at 22:39
  • @EricS That is right. From other questions of OP I believe the priority application was abandoned, but it became public through the public file of the PCT, so it is comprised in the state of the art as well. – the Europeist Jan 25 at 7:40
  • I was thinking of this plan: to amend my pending PCT to include that feature (do I need to include it in the claims or simply in the description it would be enough?), then when the PCT is nationalised in EPO, to file a divisional application for this feature. Would that work? – PCT-user Jan 25 at 9:18
  • @PCT-user How do you plan to amend the PCT? It appears to me that the window for incorporating matter from the priority application has expired by now. – the Europeist Jan 25 at 14:46
  • Can I add it then at the national EPO phase? – PCT-user Jan 25 at 16:02

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.