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6

A brief answer is that the Paris Convention was an international agreement (dating back to the late 1800's) wherein participating countries respect the priority date of patents (and some other forms of IP as well) first filed in other participating countries. So an inventor filing a patent in America, for example, would have up to 12 months to file the ...


5

Since you mention Articles 33(2) and (3) PCT, I assume that you requested International Preliminary Examination, and that the Examiner who drafted the International Preliminary Examination Report (IPRP) found that some of your claims are not novel. However, the IPRP is just that - preliminary. You may respond to the IPRP to try and overcome the objections ...


5

Unfortunately, you won't be able to file a new application and still claim priority to the provisional application now that the 12 month priority period has lapsed. However, it is worth noting that there are methods to pay the PCT filing fees late and keep the current PCT application pending (with priority intact). Filing fees are due within 1 month of the ...


4

Can retrospective damages can be sought in states designated by a PCT application before a national phase application is granted? It depends on the country, as this is not the subject of any international treaty. I will therefore talk about the US, UK and Europe, as you referenced these in your question. US Yes. Provisional rights are defined by 35 USC § ...


4

In my experience, the value of an ISR depends partially on the International Searching Authority (ISA) and partially on the style of the claims. Many applicants choose to file broad-scope claims at the international phase, aiming to restrict them to novel subject matter during the various national phases. That being said, it is a fact that some authorities ...


4

The international phase There's no requirement to respond to the ISR or written opinion. While you are provided with the opportunity to file article 19 or 34 amendments and provide arguments, and these may be considered at the international phase, many countries will just re-search and re-examine your application anyway during the national phase. You may ...


3

Assumption: A technology based patent application will be submitted to United States Patent and Trademark office (USPTO). You need first investigate prior art. Essentially you have to validate if your invention is truly an invention. There few ways you can achieve this task. Literature search - start with simple google search Make sure you have clearly ...


3

I agree with chempatent1981's answer on the expiry. I shall therefore focus on the when damages might be due. You have used the term "royalty period". However, as far as I know, that is not really a widely used term. Perhaps a more common description would be the period during which actionable infringement may occur. There are three periods in which "...


3

The PCT Applicant's Guide (National Phase) is the resource you are looking for. It contains a detailed guide on the WIPO Rules and Articles from the Applicant's perspective, and covers the time limits in detail, with pointers to information on exceptions for certain patent offices and explanations on how to address delays. From the table linked via the ...


3

In a nutshell, NO, the 12 month priority period is non-extendable. BUT... in legal stuff there is almost always an available remedy for time limits. This is only for rare and extreme cases though. What if you are ready to file your application on the last day of the priority period and suddenlty your computer breaks down and you don't have copies of your ...


3

As you have found, the patent laws of Germany, Japan and Korea provide that a later-filed international application that claims priority of an earlier filed national application has the effect of essentially withdrawing the earlier filed application. To address this, the PCT Request form has boxes to check for each of these countries that "non-designate" the ...


3

In every country, prior art must be published (that is, available to the public). An expired provisional patent application which has not been used for priority is not available to the public: that is, even a motivated member of the public could not obtain a copy. Therefore it is not prior art, and you are correct in your thinking. Incidentally, while I'm ...


3

Note that after filing the PCT, you won't really need to do anything until December 1, 2019 (30 months after the PCT app priority date), at which point you will incur costs going into the various national stages. After the June 1, 2018 window closes, your application content will be effectively "locked down". Therefore, it's not possible to rectify lack of ...


3

Thanks for all the comments. Answering my own question. I first called the number of the Pre-Grant Publication Division at (703)605-4283 according to the SB/36 form, but that number turned out already invalidated. I then called the Application Assistance Unit (AAU) at 571-272-4000. After waiting for more than one hour, I finally reached to someone and they ...


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Yes, the claims can be amended anytime before first office action. Also, One can reduce number of claims to reduce cost while demand for excess fee payment is pending. Ref 1 1893.01 (e) Commencement and Entry Ref 2


3

Just got a detailed reply from PCT via email. Quite honestly, I didn't expect such a detailed mail from PCT. I hope someone will find this info useful. In order to submit an online request to the IB to publish an international application before the expiration of 18 months from the priority date, select the Action ‘Request for early publication.’ Open ...


2

Yes you can. You must file the PCT claiming priority to the US provisional's filing date within 12 months from the day you file the provisional. The same is true if you also want to file a US non-provisional application (i.e., one that will be examined) based on the provisional.


2

AFAIK, if you advertise after you file for patent, then it isnt prior art because it wasn't prior to your filing. The risk is that after you disclosure your invention, you can not add new element, because those elements are in public domain. But even you disclosure you invention before filing an application, you will have 12 months (in most territories) to ...


2

a. The US filing date is the PCT filing date. You can find this stated clearly in this useful web page http://www.bpmlegal.com/howtoterm.html (1st asterisk). 20 year life time starts from the filing date, so the clock starts ticking at 31.12.2017. b. You have not specified if you are using the US filing as a priority or as normal US filing. You have two ...


2

"WO" is the two letter country code for PCT applications. As for patents in other territories, an application is first given an application number and then a separate publication number. In fact, these two numbers you mention relate to the same application (application number PCT/CA2004/001083 was published as WO 2005/006842). An International Patent ...


2

Once you apply for your first US patent application (whether provisional or nonprovisional), you have 12 months to file a PCT application claiming priority to the original US filing. This means your PCT is evaluated as if it was filed when your US application was. If you wait longer than 12 months from your first US patent application, then your PCT ...


2

Looks like you did a fair amount of research. Great job -- individual inventors have it tough. You get 12 months from the earliest priority date to file a PCT and claim its benefit, thus, you have to go the PCT route and can't extend it. See here for an example. Alternatively, let go of the provisional application. Do nothing. Exploit your tech, and reset ...


2

On-topic as a question about U.S. patent law and procedures. I do not see any distinction between antedating a reference on a "regular" 35 USC 111 national application and a 35 USC 371 national stage application. There is an MPEP page that covers the differences in how these types of utility applications are treated. MPEP 1896 It does not included anything ...


2

If the first application you file is a PCT application its filing date will be the priority date for everything that flows from the PCT filing. You can take advantage of that priority by entering national stages in select countries (within the 30 or 31 month deadlines). There are a few countries that are not contracting states with the PCT - Argentina and ...


2

Both articles discuss WIPO, EPO and UKIPO practice. There is no limit regarding the number of TPO that may be filed during EPO proceedings. The TPO may refer to novelty (A54 EPC), inventive step (A56 EPC), insufficiency of disclosure (A83 EPC), added subject matter [A123(2)] or even clarity (A84 EPC) and unity (A82 EPC), the two latter notably NOT being a ...


2

You will not be able to change the specification or drawings in any manner other than to correct a typo (an error in the text that is clearly an error and clearly only has one way to be fixed can be changed) or improve the legibility of a drawing. Your attorney will be stuck with your errors of omission and commission. As another answer mentions, the claims ...


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Perhaps you can look at it this way. How many countries do you really plan to enter once the PCT Application enters national phase entry. If its only USA or few handful more (say Canada and Europe), then you can altogether avoid the PCT. Instead, by June 01, 2018 prepare the non-provisional application with a professional US patent agent / attorney and use ...


2

No. Under the Paris Convention you can only claim priority to the first filed application. The exception to this is if the first application is abandoned without being published and was never used in a priority claim, then the second application in that same country can be used for priority. Article 4 is very clear. Article 4 C (4) A subsequent ...


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Good answers here are expected to be longer than one word. In this case the answer is the one word no.


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For withdrawal : Excerpt of PCT Rules 90 bis http://www.wipo.int/pct/en/texts/rules/r90bis.html 90bis.1 Withdrawal of the International Application (a) The applicant may withdraw the international application at any time prior to the expiration of 30 months from the priority date. (b) Withdrawal shall be effective on receipt of a notice addressed ...


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