Some PCT Priority Claims the USPTO Kills with Prior Art, Some with Traps
June 1, 2023
The Patent Cooperation Treaty (PCT) is an international treaty with more than one hundred and fifty member states. The goal of the cooperative agreement is to inexpensively allow inventors to maintain the ability to seek patent protection across many countries simultaneously, while giving control to the national patent office. Filing a PCT (international) application delays the deadline for filing separate applications in individual countries/regions but beware of unforeseen snares.
In his twenty-six years of experience as a patent prosecution attorney before the USPTO, Dr. Jon Platt has seen situations where PCT Article 8(2)(b) may operate to render a proper PCT priority claim unacceptable in a US-PCT-US situation, including a little-known snare for the unwary lurking in PCT Article 8(2)(b):
Before the USPTO, this situation comes into play for a US-PCT-US (or PCT-PCT-US) priority chain, regardless of whether the last US application is either a US national phase entry under 35 USC 371, or a “bypass continuation” under 35 USC 120. In such situations the validity of the priority claim is judged under US law, not PCT rules, and there are a few situations where a priority claim that would be good under PCT rules is not valid under US law.
One such situation is that in In re Touitou, a petition decision in US Application 12/078,317 (Decision attached). There the applicant first filed a provisional application in the US, then filed a PCT application in Israel, the Israeli filing being delayed until more than one year after the filing of the US provisional application because of closure of the Israeli Patent Office. Then a bypass continuation was subsequently filed in the US off of the PCT application Although the priority to US provisional application was acceptable under PCT rules, it was disallowed for the US application as unacceptable under US law, due to the operation of PCT Article 8(2)(b), since the closure of the Israeli Patent Office was not accounted for in US law.
There are at least two other situations where PCT Article 8(2)(b) may operate to render a proper PCT priority claim unacceptable in a US-PCT-US situation. The first is where a PCT application claims priority to a US nonprovisional application without the “specific reference” required by 35 USC 120 in the PCT application, as set forth in MPEP 211.02(II): the “benefit claims under 35 U.S.C. 120, 121, 365(c), and 386(c) must … indicate the relationship between the applications. ... The relationship between the applications is whether the instant application is a continuation, divisional, or continuation-in-part of the prior nonprovisional application.” This requirement is satisfied by indicating the specific relationship (for purposes of the US) in the PCT Request – but this is not the default when filing a PCT Request with a priority claim.
The second situation is the rare one where a US patent issues off of a US nonprovisional patent application before a PCT application is filed. In this situation the PCT application cannot later be brought back into the US (either as a national-phase entry or a bypass continuation) because under US law the PCT application must have been filed by the date that the patent issues, see 35 USC 120 (a subsequent application must be “filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application”). Note that the priority claim in this situation is still valid under PCT rules.
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