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My rights in Europe after filling PPA
Posted by Anonymous . updated on 2/26/2009
Hello,
I am from Slovenia ? Europe and I intend to fill for PPA in U.S. There is following paragraph in the book I am reading:
?If you publish, publicly use, sell or offer to sell your invention after filing a provisional patent application or regular patent application in the U.S., you can file for a foreign patent within 12 months of the filing date in countries that belong to the Paris Convention.?
For example, I fill for PPA and than publicly present and sell my invention all over the world, will I still be able to fill for a patent in Europe within one year after filling PPA? Even if I am not U.S. citizen?
Thank you in advance,
Ernest
Answers (6)
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Agent_O...
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Yes.
But, you have to file a utility application in the US first, and you have to use the filing date of the provisional as the priority date.
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alconada
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I agree with Agent_orange, except for the need to file a utility application in the US. This is only necesary if you still want to get a patent in the US, because the PPA will never give rise to a patent.
In Europe, a notice of the President published in the Official Journal 1996, 81 considered that a US PPA gives rise to a priority date for a subsequent, regular national application for the invention which is filed within 12 months of the date of filing of the provisional application with a reference to the provisional application (35 USC section 119(e)).
Whether the President is entitled to decide which type of applications can serve the basis for claiming priority rights is at least doubtful, although this was never discussed before the Boards of Appeal.
Greetings
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Agent_O...
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Greetings alconada.
Yeah, and as far as I know, only the nation for which the provisional is filed can determine whether that provisional serves as priority. My understanding is that, even if a US utility was not desired, a US utility application would still need to be filed, in order to use the US PPA for its priority in the international stage. Normally, of course, a US utility patent would in fact be desired. So, the situation would rarely come up.
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Isaac
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Typically an applicant in the US would file a non-provisional in the US and would then pursue international rights. ?But foreign filers (in Slovenia for example) might well elect to file a provisional application in the US and then proceed to using an international filing. ? I would caution any foreign filer to be wary of any local laws requiring filing in his/her own country before filing abroad.
An advantage to proceeding as above ?would be that filing a provisional would allow the later international filing to be prior art as of the provisional filing date very cheaply. ?On the other hand, claiming foreign priority and then filing a US or international application based on that foreign priority not provide the prior art effect in the US based on the foreign filing date. ?(See In re Hilmer).
Of course for such an applicant, a requirement to file a US national application prior to filing the international application would be a signficant barrier to using this strategy. ? Fortunately, it generally isn't necessary to do this.
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Agent_O...
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Understood.
Yeah, to answer the OP's question directly, all I was saying is that the US must be designated. It can be at the same time as other countries (or even after, I imagine). But the US PPA would not ever establish lasting priority, unless a follow-up US non-provisional, which claimed the benefit of that provisional, was filed within a year, and was ultimately examined by the USPTO.
Fascinating stuff!
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Isaac
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Quote Understood.
Yeah, to answer the OP's question directly, all I was saying is that the US must be designated.
Absolutely. If you go the international route, designating the US and publishing in English would be a must under the strategy I suggest. If you do that within 12 months, you shouldn't have a problem after the PPA expires because you can still enter the US during the national phase on the regular schedule.
There may be some countries out there that wouldn't allow claiming priority to a US provisional application even with claims, but I don't know of any.
At one time it was believed that some countries would not recognize a priority claim to a provisional because a provisional had no chance of every becoming a patent. In response, the US added a procedure for converting a provisional to a non-provisional. The mere existence of this converting procedure was enough to resolve the issue in some countries. You don't actually need to use it.
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