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

[Rick Neifeld]

Dan "has not" answers your question.

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: richardneifeld at gmail.com
Web: https://neifeld.com/
This is NOT a confidential communication of counsel. If you are not the 
intended recipient, delete this email and notify the sender that you did so.

On 4/30/2024 4:12 PM, Dan Feigelson via Patentpractice wrote:
> 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
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240508/5784201c/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: rneifeld.vcf
Type: text/vcard
Size: 373 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240508/5784201c/attachment.vcf>