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I want to use the 30-month application-filing sequence, provisional->PCT->nationals. The invention comprises two components, A and B. After filing both a provisional and a subsequent international PCT, I realized that a second version of B is possible, and I would like to protect both. Calling the first application AB1, which has not published, what are my options for AB2? A continuation in part offers an option for the US national filing. Is there any way to file a single international application covering both AB1 and AB2 in which different claims have different priority dates?

posted Wednesday 26 of June 2013 by Arthur [patent filing]   4 comments

ANSWER

You can always file a follow-on PCT on an improvement to your already filed application, provided that the invention is not yet publicly known or been published. So, if you file before your first application has published and before you've otherwise disclosed the information in the first application publicly, then prepare your second application, emphasizing the differences with the first. You can then go forward in this improved application as a PCT application. Note however that the improved application will be judged as not patentable if the claims are essentially the same as in the first application (see no double protection for AB1 in this one), but that the inventive step of your invention will not be affected by the first application (so you can protect AB2 in the international application). In the US however, the first application, if effectively filed in the US (which is probably the case if you filed the first application as a PCT), will be considered prior art for the determination of both the novelty and obviousness of your claims in the second international application. I hope then that you can use the principles above to answer your more detailed question. If not, let me know.

Tags: 30 month, application, filing, sequence, pct, provisional
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Sunday 30 of June 2013 – posted by Arthur
As you observe (correctly, in my view), the obviousness of AB2, given AB1 could well be an issue. So, let me ask: If claims in AB2 are rejected during the prosecution of AB2 as being obvious, given AB1, will that rejection provide useful legal content in a downstream infringement suit based on the use of AB2? In other words, is there benefit to filing and prosecuting an application covering AB2, even if the claims are rejected as obvious?

Monday 1 of July 2013 – posted by Dr Patentstein
Thanks for your follow-on question. Maybe is the best answer I can give to your question, because obviousness is not the same as equivalency, although they are very similar, but on opposite sides of the fence dividing prosecution and enforcement. If you can get a broad claim in your first application that essentially covers AB2 and your AB2 application is consistently rejected for obviousness after a couple of good faith attempts to convince the examiner, you could point this out in the event of a later infringement suit. Prosecution is not likely to present significant risks unless you cannot get a broad enough claim in your first application to cover AB2. I hope that makes sense.

Friday 6 of September 2013 – posted by Arthur
I would like to go one more round with this issue/question.
Just to remind you, a provisional and international PCT have been filed, and now the latter has been published. The claim scope is unnecessarily narrow, and might permit a competitor to exploit the same idea with a marginally different embodiment.
A new provisional was filed prior to the publication of the PCT with broader claims.
My question: Can national filings claim priority to both the original (international) PCT and the new provisional?

Friday 6 of September 2013 – posted by Dr Patentstein
Yes, this is possible, but only where national law permits this. However, I believe it is only the US that would permit this sort of a filing. In the US, you’d file a continuation-in-part off of the PCT, claiming priority to both. Not often done but possible. However NO CHANCE in Europe to do the same. Also, the same for China and other typically selected countries. Exceptions, but for another reason (because they are no absolute novelty countries—unless their law have changed recently) are Egypt, and New Zealand.

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