Question
History: five months before filing my application, I made the presentation of a prototype concerning my invention in a science fair.
My attorney advised me to mention this presentation in the patent application to secure the priority date.
After two months from the filing date of my initial patent I made some design changes and deposited another patent application, citing internal priority of the earlier deposit, which were only claimed the news.
Now, It's been ten months of the second filing and must be extended.
Question: Knowing that the deadline for extension of a patent application for other countries is twelve months, what is the priority to be considered? The date of disclosure, the first domestic priority or the date of the second patent filing?
Regards,
Answers: 2 public & 0 private
One must consider that there are two inventions A and B that follow in time, even if the second (B) is close to the first (A) and consists in its refinement, improvement somehow.
The disclosure of the first invention (A) is not - or more - to be considered in terms of "priority", even though it may weaken the second invention (B) from the viewpoint of patentability (depending on of the applicable law), reason why your attorney advised you to mention it in the first filing (I assume that it is a US patent application?).
If I understand you correctly, the second invention (B) was the subject, only two months after the first (national) filing, of the (national) filing of a second patent application under the (internal) priority of the first one.
Since the first patent application has not had the time to be published (the publication of an application takes place only at the end of 18 months of the "secrecy period"), this means that the "good" priority to be considered is the first filing date (first priority) and that you must file your PCT patent application (International extension) before the end of before the end of the twelve-month period - you mention rightly - from the first priority (and not the second one).
This leaves you very little time if ten months have already elapsed between the two successive national filings!
You will keep the priority of the first application and you will necessary "win" two months in time (this is the advantage of the "internal priority").
But be careful, you have to abandon the first patent application before its official publication by the relevant patent Office because it may "interfere" and "pollute" the second one from the point of view of its patentability (novelty, inventive step). The first national filing has, anyway, no interest because of the prior disclosure of the invention (A) covered.
To sum up:
First, hurry up to place your PCT patent application (WIPO) under priority of the first priority if you want to keep the date of the first filing and thus "win" two more months of prior art,
Secondly, give up the first (national) patent application before the end of his eighteen months (you have less than six months to do).
Please revert to me if you still need clarification.
Sincerely yours,
Simon
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