PCT claiming priority of CIP


Hi, Can you please advise?
We filed a utility application in the US about 14 months ago, 4 months later we filed a CIP claiming its priority and 10 months after the filing of the CIP we filed a PCT application claiming the priority of the CIP.
The first utility application will be published in two months. The question is-- how will this affect, if at all, the priority date of the PCT (which currently is the filing date of the CIP), and will the first utility application be used as prior art against us?


回答: 4 public & 0 非公開


Steven, there is more to that outside the US. PCT priority rules are based on the Paris Convention. You can only claim priority on a FIRST patent application. A CIP is necessarily a second or subsequent application, so the priority claim based on the CIP is invalid, UNLESS the PCT is directed exclusively to the new matter that was added in the CIP. Since the PCT was filed more than 12 months after the initial US application, the priority claim cannot be rectified to be based on the initial US application.

In summary, the priority claim being invalid, anything published before the filing of the PCT application, even by the inventors themselves is prior art against the PCT application. If the publication of the initial US application is the first publication of the invention, the PCT application may still survive, but you need to hope that no other prior art was published up to the filing date of the PCT.