[Pct] Multiple priority in epct

Sat Jan 13 10:45:48 EST 2024

Most answers to these questions resolve if you just go back to the basic
governing law.  (And frankly, step-b-step is the ONLY way to get right
answers.  Any attempt to reduce to informal rules of thumb will be
misleading.)   You can't practice patent law unless you fully internalize
these concepts to your bones.

The Paris Convention (and by incorporation, the PCT) has one and only one
concept -- priority.   Paris priority needs continuity of disclosure,
continuity of applicant (not inventor), one year (no requirement for
continuity), and a priority claim.

Sections 119 and 120 have only two concepts -- benefit from a
nonprovisional, and benefit from a provisional.  You must have the four
continuities (disclosure, inventor, co-pendency, and benefit claim).  Plus,
for a provisional, a fifth requirement -- one year.

"Continuation" vs "CIP" is just an informal name.  It is neither statutory
nor treaty.  Before 2007 (or thereabouts) it wasn't even recognized by
regulation.  All it does is signal to the examiner what priority dates the
examiner is to plug into the search software.

(371 national phase entry is still a different thing--you cant lump it in
with either of the other two.  It's different.)

Start with that basis, and look at stuff step by step.

The only reason for a priority or benefit claim is to obtain the legal
"relation back" status to earlier disclosure.  So if two applications have
identical specification and drawings, there's no benefit to claiming
priority/benefit to both.  It just broadens the circle of potential
cross-infection of inequitable conduct.

I suppose if you incorporate both by reference, it gives you a little
insurance against an omitted-page or omitted-part screwup.

On Sat, Jan 13, 2024, 8:39 AM Jeffrey Semprebon via Pct <
pct at oppedahl-lists.com> wrote:

> In a number of Carl's webinars and advice on these lists, he's recommended
> viewing the PCT application as a bundle of national applications, rather
> than as some separate entity with its own esoteric rules. For purposes of
> this question, simply treat the PCT a US national application (which it
> will eventually be, if entered). If it only contains the subject matter of
> the DEC 2023 non-provisional, you'd naturally file it as a continuation. If
> it does have new matter, you'd file it as a CIP.
>
> Whether you eventually decide to enter this into the US national phase or
> decide to file a bypass (essentially a CON or CIP of this current
> application) doesn't really matter for purposes of how you designate this
> application when filing it. Treat it as a US application for purposes of
> the US.
>
> -Jeff
> Jeffrey E. Semprebon
> Semprebon Patent Services
> www.semprebonps.com
> 72 Myrtle Street
> Claremont, New Hampshire 03743
>
> On Fri, Jan 12, 2024 at 9:57 AM Victoria OConnor via Pct <
> pct at oppedahl-lists.com> wrote:
>
>> I’m sorry for the multiple emails.  I said one thing in the email below
>> and meant another.  To clarify, Under the Designation section you can
>> designate the PCT as a CON or CIP of the US NP Apn is what I meant to say.
>>
>>
>>
>>
>> Thanks everyone.
>>
>> Victoria
>>
>>
>>
>> *From:* Pct <pct-bounces at oppedahl-lists.com> *On Behalf Of *Victoria
>> OConnor via Pct
>> *Sent:* Friday, January 12, 2024 8:28 AM
>> *To:* For users of the PCT and ePCT. This is not for laypersons to seek
>> legal advice. <pct at oppedahl-lists.com>
>> *Cc:* Victoria OConnor <Victoria at brakehughes.com>
>> *Subject:* Re: [Pct] Multiple priority in epct
>>
>>
>>
>> Good morning list mates - Not to hijack the post but I have a somewhat
>> related question to this.  What is the benefit, if any, in claiming a PCT
>> as a continuation to a US non-provisional application?  For example, I have
>> a US Non-Provisional Apn as the priority of this PCT we are about to file.
>> Under the “designations” section, you can add the US non-provisional apn as
>> a Con or CIP as well.  Is there an added benefit of including that the PCT
>> is also a CON of that US NP apn versus just having the US Apn listed as a
>> priority only?  Could someone point me to the MPEP or PCT rules that
>> discuss this?  When I tried to search for further info on this, I keep
>> getting information about filing bypass cons of the PCT in the US instead
>> of a US National Phase, not the other way around.  That’s not what I am
>> looking for.
>>
>>
>>
>> Thanks in advance.  And TGIF!
>>
>> Victoria
>>
>>
>>
>> *From:* Pct <pct-bounces at oppedahl-lists.com> *On Behalf Of *Carl
>> Oppedahl via Pct
>> *Sent:* Friday, January 12, 2024 3:35 AM
>> *To:* For users of the PCT and ePCT. This is not for laypersons to seek
>> legal advice. <pct at oppedahl-lists.com>
>> *Cc:* Carl Oppedahl <carl at oppedahl.com>
>> *Subject:* Re: [Pct] Multiple priority in epct
>>
>>
>>
>> (Note to listserv members -- Sudarkodi Venkatesan is a patent agent, see
>> https://www.linkedin.com/in/sudarkodi-patentagent/
>> <https://protect-us.mimecast.com/s/NVv0Cn56KDuQwrwU9a8VO?domain=linkedin.com>
>> .)
>>
>> You are logged in at ePCT, I gather, and you are preparing a PCT
>> request, I gather.  So you scroll down to the "Priority claims" area.
>> See the "Add" button?
>>
>> So if you are claiming two priorities instead of just one, then you
>> click the "Add" button twice instead of just once.
>>
>> I'd be grateful if later you can post a followup to the listserv to let
>> me know whether this posting answered your question.
>>
>> On 1/12/2024 12:29 AM, Sudarkodi Venkatesan via Pct wrote:
>> > I am filing an application in epct. The priority is a parent patent
>> > filed on 13 jan 23 and the additional patent filed on 18 dec 23.
>> >
>> > How can I give the details of both the priority documents in epct?
>> >
>> > The specification of the pct application is a combination of the
>> > parent and addition patents with claims having priority in the two
>> > priorities separately.  This is my first pct filing so please guide me.
>> >
>> >
>> --
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>> Pct at oppedahl-lists.com
>> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>>
> --
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>
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