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

[Dan Feigelson]

I agree. And we will not be making a non-pub request in the US case.

On Wed, May 8, 2024 at 10:31 PM Rick Neifeld via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
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> 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 months after filing, the application shall not be published as provided in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
>
>
>

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