Sayed stated:
I have a hypothetical question which i hope someone might be able to
answer. It relates to a US patent and its CIP. Lets say I have two US
patents, one is a US parent and another a CIP of it. The US parent is
subsequently filed as a PCT application but does not designate a
particular country, say X. The US CIP is also subsequently filed as a
PCT application but it designate the country X.
1. Syed asked "Is it possible for one to designate a country in the
2nd case although it has not been designated in the first case." Yes.
Designations are formalities in a PCT application request. As specified
in Article 4 in the PCT:
Article 4
The Request
(1) The request shall contain:
(i) a petition to the effect that the international application be
processed according to this Treaty;
(ii) the designation of the Contracting State or States in which
protection for the invention is desired on the basis of the
international
application ("designated States"); if for any designated State a
regional
patent is available and the applicant wishes to obtain a regional patent
rather than a national patent, the request shall so indicate; if, under
a treaty
concerning a regional patent, the applicant cannot limit his application
to
certain of the States party to that treaty, designation of one of those
States
and the indication of the wish to obtain the regional patent shall be
treated
as designation of all the States party to that treaty; if, under the
national
law of the designated State, the designation of that State has the
effect of
an application for a regional patent, the designation of the said State
shall
be treated as an indication of the wish to obtain the regional patent;
Thus, one can fill out the form specifying different countries. Keep in
mind that a U.S. "CIP" application is merely a U.S. application that
claims priority to an earlier U.S. application. Of course, the current
form allows a default designation of all contracting states, with check
boxes to de-designate a few states (Germany, Russia, Japan, Korea, see
the request form, section V). I guess you could replace or mark up that
form to only designate some subset of the contracting states to avoid
designating some particular state (other than Germany, Russia, Japan,
Korea). I cannot imagine why you would want to do that.
Moreover, you may have a Paris convention article 4 problem with
your priority claims. You can only rightfully claim priority to an
earlier application if the earlier application complies with Paris
article 4, specifically article 4(c)(4) which states:
(4) A subsequent application concerning the
same subject as a previous first application within the
meaning of paragraph (2), above, filed in the same
country of the Union. shall be considered as the first
application, of which the filing date shall be the starting
point of the period of priority, if, at the time of filing
the subsequent application, the said previous
application has been withdrawn, abandoned, or
refused, without having been laid open to public
inspection and without leaving any rights outstanding,
and if it has not yet served as a basis for claiming a
right of priority. The previous application may not
thereafter serve as a basis for claiming a right of priority.
I have seen many instances (via cases transferred to my firm where I
took over prosecution, not cases I filed!) where PCT applicants failed
to recognize the foregoing requirement, resulting in loss of rights.
2. Syed asked "Doesn't it make the second application obvious in the
light of the first one in the country X since the first one(US parent)
has not been filed in that country?" - The PCT Treaty specifically does
not answer you question. The PCT treaty is not a treaty specifying
substantive patent law. In fact, PCT Article 27 forecloses that issue
being determined by the PCT. It states, in section (5):
(5) Nothing in this Treaty and the Regulations is intended to be
construed as prescribing anything that would limit the freedom of each
Contracting State to prescribe such substantive conditions of
patentability
as it desires. In particular, any provision in this Treaty and the
Regulations
concerning the definition of prior art is exclusively for the purposes
of the
international procedure and, consequently, any Contracting State is free
to
apply, when determining the patentability of an invention claimed in an
international application, the criteria of its national law in respect
of prior
art and other conditions of patentability not constituting requirements
as
to the form and contents of applications.
In other words, the answer to your question depends upon the national
laws of country X.
Thanks, RICK
Rick Neifeld, Ph.D. Patent Attorney
President
Neifeld IP Law, PC URL: www.Neifeld.com
StockPricePredictor.com, LLC URL: www.PatentValuePredictor.com
4813-B Eisenhower Avenue
Alexandria Virginia 22304
Tel: 703-415-0012
Fax: 703-415-0013
This email may contain privileged and confidential information. If you
are not the intended recipient, delete this email and notify the sender.
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-----Original Message-----
From: syed ali [mailto:sy.patinfo_at_gmail.com]
Sent: Tuesday, January 29, 2008 3:38 AM
To: PIUG Discussion List @ Listbox
Subject: [PIUG List] US CIP
Dear Friends
I have a hypothetical question which i hope someone might be able to
answer. It relates to a US patent and its CIP.
Lets say I have two US patents, one is a US parent and another a CIP of
it.
The US parent is subsequently filed as a PCT application but does not
designate a particular country, say X.
The US CIP is also subsequently filed as a PCT application but it
designate the country X.
My doubt is:
Is it possible for one to designate a country in the 2nd case although
it has not been designated in the first case. If it is yes, then
Doesn't it make the second application obvious in the light of the first
one in the country X since the first one(US parent) has not been filed
in that country?
Thanks
Syed
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Received on Tue Jan 29 2008 - 14:45:34
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