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Due to the application beeing pre AIA, I had to revise my previous answer Lets start with two of the three conditions for patentability - novelty and non-obviousness (the third is usefulness). Prior art for both is the same (see mpep 2141.01) ! This is based in: (Post AIA, so for your question the next section is not relevant, however I find it very ...


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Good question. I am unaware of any limit on the number of documents on which priority may be claimed. Sometimes a patent application claims priority to an application that itself claims priority to another patent application. For example, an inventor could file a provisional application. A non-provisional application could claim priority to the ...


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It is likely you are seeing the effects of a continuation (or divisional, outside of the US). The continuation retains the priority date of its parent, but has a much later filing date. By way of example: A Canadian application (CA1) is filed on 1 Jun 2012. CA1 therefore has a filing date of 1 Jun 2012, but no priority date. A US application (US1) claiming ...


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Priority is governed by 35 USC §119(a). The important part for us is the beginning, which provides: An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country … It then ends with a ...


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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 ...


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You are correct. From MPEP 211.05 A: for a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovisional ...


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Priority claims are governed by the Paris Convention art 4. Arts 4(C)(1)–(2) requires that priority can be claimed for twelve months from the date of filing the first application. Art 4(C)(4) provides that a subsequent application can only be used if the first filing "has been withdrawn, abandoned, or refused, without having been laid open to public ...


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Before publication, the examiner can't cite it. After it publishes, it can be used as prior art, back dated with the date of the filing or priority date. To contrast a patent with other publications: There is a delay between when a a paper is submitted to a journal and when it publishes. Its date for counting as prior art is the day the first copy of the ...


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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 ...


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You keep all the priority dates. Upon reinstatement, everything is reinstated. It can have an effect on Patent Term Extension.


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Just to clarify this question about priority dates from a European patent application perspective. Each and every claim of a European patent application has one or more effective dates (yes, a single claim may have more than one effective date). In this case, say P1 is the filing date of the first provisional application, P2 the filing date of the second ...


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No, there is absolutely no way to include anything new in any patent application anywhere, no matter what the reason is, once the application has been filed. Your best option is to nationalize the PCT application in the US. You could claim priority to the PCT application, too, but in Europe that would be only valid for the new matter introduced there. I ...


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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.


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A question for the new post-AIA patent bar exam? No, Bob should not get a patent. Under the post-AIA, post March 15th 2013, section 102(a)(2) the fact that the filing date of John's preceded Bob's makes John's patent prior art to Bob's even though John's was not filed in the US but only because he later did file in the US getting priority from the German ...


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Do I do a rush job in the next couple weeks on my regular app, keeping my provisional as priority, and hope to amend with professional help later? It is especially common for the ideas in a provisional to be developed significantly over the year. Indeed, that is one of the purposes of having a provisional application available. So there is no problem with ...


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Will claiming priority from a provisional reveal it to public? Yes. A provisional application is never itself published (37 CFR 1.211(b)). However, a provisional application becomes part of the file wrapper of any later-filed application which relies on it. When the later-filed application is published, the contents of the provisional application becomes ...


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Consider the following scenario: Prov1 - Filed on 1 July 2016 NP1 - Filed on 1 June 2017, claiming priority to Prov1 NP2 - Filed on 1 July 2017, claiming priority to Prov1 Once NP1 is published, it is prior art as of 1 July 2016 (the filing date of Prov1). So if a claim of NP2 does not have a valid priority claim to Prov1, it must be novel/non-obvious ...


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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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Edited for below comments. MPEP 2163.07(b): Incorporation by Reference [R-11.2013] Instead of repeating some information contained in another document, an application may attempt to incorporate the content of another document or part thereof by reference to the document in the text of the specification. The information incorporated is as much a part ...


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In the first sentence of the non-provisional you claim priority to both of the provisionals. During the prosecution of the application and any divisionals or continuations you will have specific claims that will, most probably, meet with rejections based on "prior art" cited by the examiner. The examiner initially views anything prior to your non-provisional ...


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I assume you mean a difference of years, not days or weeks, but some countries now allow you to miss the 1 year priority date. Details in this Q/A, which discusses a two months grace period some countries give.


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Legal basis for priority is article 4 of the Paris Convention. For your example, relevant are the following extracts, Article 4C: (1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks. (2) These periods shall start from the date of filing of the first ...


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The MPEP (§708.02(a)) requirements are at least intended to assure that prioritized examination should have minimal impact on other examinations. Basically, prioritized examination moves a great deal of the burden from the examiner to the petitioner. To give some specifics: The application must be filed electronically. The application is restricted to no ...


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A non-provisional application can claim priority to multiple provisional (or indeed nonprovisional) applications. Per 37 CFR 1.78(a): An applicant in a nonprovisional application … may claim the benefit of one or more prior-filed provisional applications However, the nonprovisional application (and any Conventional applications filed in other countries) ...


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If my application was rejected, can I write a new application based on the same idea, or it would be rejected because the old application was considered as a prior art? Depends on the dates. If the old application was published, and more than a year has passed from its publication, you can't file anew and it will be considered as prior art. (I'm just ...


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To understand the File History of a patent or an application - (filed/granted in US) - follow the steps shown here (as of September 2015) 1 - Search for USPTO Public Pair 2 - Go to the page shown below Enter the captcha and press Continue 3 - Now enter the publication number-select that radio button and press Search 4 - Now select the tab that you want ...


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Priority is a tricky issue. Just because an applicant claims priority from some other application does not automatically mean it is valid. The examiner may find the priority claim to be unfounded. This is for instance the case if the claim contains subject-matter that is not contained in the priority document. Applicants often try to sneak in additional ...


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I have a European view on the above problem: A 2012 book chapter from Dave Musker, a European & UK patent attorney ["The Overlap between patent and design protection"; http://www.beck-shop.de/fachbuch/leseprobe/9780199696444_LP.pdf ] is helpful on this & talks about the interaction between patents and "industrial designs" (design patents in US, ...


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The MPEP chapter for design patents provides one section about priority (1504.10 Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) [R-07.2015]): The right of priority provided for by subsections (a) through (d) of section 119 shall be six months in the case of designs. The right of priority provided for by section 119(e) shall not apply to designs. ...


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After quite some searching on this rather interesting question, frustratingly I could not find a particular reference for this in US law specifically, nor anything specifically regarding China. However, although it's not a very satisfactory, I could find some basis for this contention through the Paris Convention (which is implemented in US law). The ...


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