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Suppose an inventor-applicant residing in the U.S. wishes to secure a U.S. filing date as early as possible with provisional A.

Subsequently the inventor-applicant would refine the content to make it compatible with EPO standards of examination. This would take some time and result in a second application would be filed with the UPSTO as provisional B.

Can the inventor-applicant then file the content of provisional B with the EPO without a priority claim?

My understanding is this would be possible. It is not possible to do it with a priority claim because B is not the earliest application for the same invention, but as I understand it nothing bars filing B without a priority claim at all. Am I correct in my understanding?

Editing to add that we are assuming the invention is not being publicly disclosed before the automatic publication of a subsequent non-provisional U.S. application that will claim priority to provisionals A and B.

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  • Has the invention been publicly disclosed?
    – George White
    Jan 9 at 16:18
  • @GeorgeWhite No - added this detail to the question.
    – bhuff36
    Jan 9 at 17:23

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If the US non provisional has not published and the invention being disclosed and claimed in the EPO filing has not otherwise been disclosed publicly then novelty isn’t broken and you can file in the EPO without any claim of priority.

If there is significant overlap in the the A and B provisionals and it is within a year of A being filed then you could benefit from claiming priority from A. If they are very different in content then it might be the case that for some of the claims B is the first filed application of its subject matter.

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