[Patentpractice] non-pub request for case claiming priority from abandoned foreign application

[Dan Feigelson]

Applicant filed first application in Israel, and plans to file in the US
and only in the US claiming priority from the Israel application.

Israel is an 18-month-from-earliest-priority-publication country, so this
set of facts would preclude filing a non-publication request at the USPTO.

But what if the applicant abandons its Israel application before
publication? In that circumstance, can the applicant properly make a
non-pub request in the US case?

The way 35 USC 122 is worded, the answer seems to be no:

122(b)(B))(i)  If an applicant makes a request upon filing, certifying that
the invention disclosed in the application has not and will not be the
subject of an application filed in another country, or under a multilateral
international agreement, that requires publication of applications 18
months after filing, the application shall not be published as provided in
paragraph (1).

I think the straightforward reading of that paragraph is that it's not a
question of whether or not the application filed abroad actually publishes,
but whether or not the law in the country where the application was filed
provides 18-month publication of applications. And Israel certainly fits
that bill.

I suppose one could take the position that the country in question
doesn't *require
*publication of applications at 18 months unless those applications are
still pending, and therefore the invention disclosed was not "the subject
of an application filed in another country...that requires publication of
applications 18 months after filing" since the foreign application was
abandoned.

But I wouldn't want to be the guinea pig to find out what the PTO or the
courts say about it. And making a non-pub request in an application that
claims foreign priority from an application filed in an 18-month
publication country is begging the PTO to call out the filer on this.

Dan

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