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There are two issues at play
when you reference “deadlines.”
One deadline can be a priority
deadline. That is the
deadline you need to meet so
that your next filing is legally
granted the filing date of a
previously file application
(i.e., the priority date).
The Paris Convention (which
guides portions of the PCT) has
a 12-month priority deadline.
That goes for U.S., Paris
Convention Members and PCT
Member States.
For
the purposes of foreign filing,
a provisional application and
non-provisional are treated the
same. That 12-month clock
starts ticking from the
provisional filing date to file
PCT AND obtain that
provisional’s priority date.
If you:
1)
Filed a provisional on January
1, 2000, (OK)
2)
Filed a non-provisional on June
1, 2000, (OK)
3)
Filed a PCT application on March
1, 2001 (PCT OK but only for
June 1, 2000 priority date)
you
would only get priority to the
non-provisional filed on June 1,
2000 (only application within 12
months). HOWEVER, you
might lose far more than a
priority date as discussed
below.
The
second issue of deadlines is
that of statutory bars resulting
from publication. In the
university environment, there is
a strong tendency to disclose
invention – particularly right
after a provisional is filed.
So, let’s add to the scenario
above:
1)
Filed a provisional on January
1, 2000, (OK)
2)
Disclosed invention February 1,
2000, (OK)
3)
Filed a non-provisional on June
1, 2000, (OK)
4)
Filed a PCT application on March
1, 2001 (PCT Fails)
In
the above-mentioned scenario you
lost your provisional priority
date for the PCT. Foreign
countries have an absolute
novelty requirement meaning
there can be no disclosure
before an application is filed.
Since the PCT couldn’t use the
provisional filing date (outside
12-months) it had to use the
non-provisional filing date
which was AFTER the disclosure.
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