Patent, application priority date

Ishikawa T, Harada Y, Hayashi H, Kajii S (2003) US Patent 6,541,416 B2 (Foreign Application Priority Date June 13,2000)... 

Source, publication, date, publisher, volume, issue, pagination, CODEN, ISSN Patent identification, including patent, application, priority, and patent family information Abstract of the article or patent Indexing... 

Matsunaga, P. T. WO Patent Application 9957159 to Exxon Chemical Patents Inc., priority date May 1, 1998. 

Another important item for a patent is the priority date. The priority date is established when a patent application is filed for the first time. If the invention is known before this date, then the patent is not granted. Most countries are first-to-file countries, which means that the patent is awarded to the person with the earliest filing date. In the United States, patents are awarded to the first person to invent. The inventor can attempt to show the invention was made before another person s filing date to claim priority. 

The procedure for obtaining a patent is typically started by filing a national patent application in a patent office of a country which is party to the Paris Convention (an international treaty agreeing certain reciprocal patent rights). This application can provide a so-called priority date for the invention disclosed in this priority application such that the patentability of the invention is assessed as of that date. This priority date can given to further patent applications filed in other Paris Convention territories provided that these further patent applications are filed within 12 months of the first priority application. A patent application must be filed before any public disclosure of the invention since, in most territories, public disclosures before the priority date can be used to attack the novelty and non-obviousness of an invention described in a patent application. 

This means that an invention is considered new only if it does not form part of the broadly defined public state of the art before the date of filing of the European patent application (or the corresponding priority-establishing application). The state of the art in the sense of the EPC is not locally restricted. When examining the claims of the patent application with regard to their novelty, the European Patent Office considers prior publication of the invention irrespective of whether the publication occurred in one of the member states of the EPC or elsewhere. 

If the second (later) application claims subject matter that was not disclosed in the first application, any prior art published before the filing date of the later application is considered. Thus, such newly introduced subject matter has to be both novel and inventive with respect to the prior art published before the later filing date. Normally, this does not cause problems. However, if a researcher had filed a first patent application before the respective scientific manuscript on his invention was published and thereafter files (within the priority year) a second application claiming an improved embodiment of the invention, then the improvement not only has to be novel, but also inventive with respect to the subject matter of the manuscript published between the two filing dates. Very often, the improved embodiment is not inventive over the published manuscript. Thus, the improvement is not patentable over the disclosure of the invention in the published manuscript, although the content of the publication was filed as the first patent application. Therefore, publishing the invention within the priority year should be avoided. 

From time to time, different persons invent the same subject matter and intend to protect it by patent rights. In these cases, two or more patent applications are filed by the inventors claiming substantially the same invention. Most countries in the world apply the first-to-file principle to determine who is entitled to the patent. In contrast, the United States do not give priority in case of conflict to the first applicant, but to the first to invent. Interference proceedings are instituted to determine who is the first inventor and consequently entitled to the patent (see 35 U.S.C. 102 g (1)). The parties involved in such a proceeding may provide evidence of facts to prove their date of invention. 

The use of patent term in this context does not imply that there is 20 or 21 years of enforceable patent life with some limited exceptions, a patent is usually issued before it is enforced against infringers. If one considers that patent prosecution can easily take a few years before any claim issues from the filed patent application, than the enforceable patent life can be markedly shorter than the 20-year patent term. In the context used in this chapter, the patent term refers to the period from the filing date of the earliest patent application relied on for its priority date in the chain (the first-filed provisional patent application in this instant). 

Let s start with the most recently filed patent application and then work backward. For compound D, there was no provisional patent application that was filed containing its structure. Rather, the compound made its first appearance in the nonprovisional patent application therefore, it properly claims priority to a filing date of July 29, 2009. The third (last) provisional application that was filed contained compound C only, and it was filed on April 15, 2009, so compound C s effective priority date is April 15,2009. The second provisional application that was filed contained compound B only, and it was filed on December 29, 2008, so compound B s effective priority date is December 29, 2008. 

One way to avoid the scenario just outlined for compound A, where effectively a whole year of priority filing for that compound has been lost, is to include the contents of each provisional patent application in the next provisional application. If that had been done in this example, the provisional application containing compound B that was filed on December 29, 2008, would also contain the subject matter from the earlier provisional application containing the compound A. This way, if for some reason the 1 year time frame was missed as in the example, the priority date for compound A would be December 29, 2008, rather than pushed all the way forward to July 29, 2009. This may not seem like much, but in a highly competitive area it can sometimes mean a lot.19... 

Generally, as a parallel consideration, a regular patent application filed with the USPTO will eventually be published and thus made available to the public in much the same manner as that described previously for PCT applications.27 The timeframe for publication is usually 18 months from the filing of the first application from which priority is claimed (as is the case for a PCT-filed application), except a patent application entering the United States from the PCT will already be 18 months from the nonprovisional filing date and up to 30 months from any earlier-filed provisional patent application from which it claims priority (but, of course, such an application will have already been published by the PCT as a WO publication at the 18-month time point). 

Whether the applicant is filing an RCE, a continuation, or a divisional application, an important aspect to keep in mind is that the filing date of the first regular patent application in the chain sets the patent term clock ticking. This means that any of the patents that claim priority (continuations or divisional) from that original application will have their 20-year lifetime measured from the date on which the parent application was filed (absent special circumstances).42... 

In Chapter 2 we learned that the filing of a U.S. patent application serves as a constructive reduction to practice as of the date that the application is filed. However, we also learned that the patent application as filed needed to satisfy the requirements of 112 f 1. Similarly we learned that an applicant is awarded a priority date as of their date of filing the patent application, but this assumes that the filed patent application satisfies the requirements of 112 f 1 as well. This means that the value of the patent application to the patentee is largely premised on the ability of the patentee to fulfill the requirements of 112 f 1. 

Chapter 2, we know that patent applications can be considered like links in a chain. In the patent chain, filing date priority can be followed back through the chain until the earliest date that the particular subject matter was included in the patent application that provides the necessary written description support for the later set of claims, no matter how much later those claims occurred, provided that the support of the claimed subject matter was present in each one of the linking applications and the later-filed patent applications properly claimed priority to the earlier-filed cases.4... 

As a drafting matter, each application in the chain must properly claim priority to each of the patent applications in the chain. You have probably seen claims to priority in patent applications and/or on the cover sheet to the patent application or patent. The claim to priority lists die applications in the chain and their relationship one to die other. The process can also be thought of as something akin to a relay race in which the baton must be properly handed from one runner to die next runner. To properly claim priority to one or more earlier filed patent applications, the later filed patent application must cite the patent application or patent applications that are being claimed for priority date purposes. Moreover, each... 

For the examples illustrated in Figures 9.2 and 9.3, both sets of claims were supported in the original application as tiled, but the claims that issued in each patent described a different genus of compounds, and moreover, they issued in different patents on dates separated by more than 4 years. Despite this fact, both sets of claims were supported by the original disclosure, and consequently, the priority date for... 

In Chapter 2 we briefly discussed the possibility of claiming a priority date from an earlier filed patent application provided, among other things, that the earlier filed patent application met the requirements of 112, including providing the best mode of practicing the claimed invention. 

Those Members that did not provide patent protection for pharmaceutical products when the wto was bom were allowed until 1 January 2005 to implement it. However, under Article 70.8 of trips, these countries still had to establish a mailbox for filing foreign patent applications that would preserve the priority dates of any pharmaceutical... 

As should be common practice when working in a competitive field, we maintained a watch worldwide for relevant third-party patents and patent applications as they were published. In Europe and most other countries, patent applications are published 18 months from the earliest priority date. In the United States, at that time, patents were not published until grant (the law has recently changed7), but grant can often occur earlier in the United States than in other major countries. That was the... 

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