Saturday, September 15, 2007

Post-Nov 1 strategy on continuing applications?

Of the changes in continuing applications that begin after November 1, 2007, I/P Updates had some remarks.

The comments of I/P Updates based on a Merchant & Gould presentation:

Use provisionals and going national stage from a PCT application
•Time - lag in prosecution 1 year and 2.5 years
•Limits on continuations do not apply
•5/25 rules apply

Maximizing Options with Provisional and PCT Applications
Day 1 - file U.S. provisional application
Day 2 - file same text as U.S. utility application without priority claim
Year from day 1, with priority claim only to the provisional application -
•file PCT application designating U.S., and
•perhaps, file U.S. utility application
•(these can be “continuations-in-part” of the provisional)

IPBiz notes
--> a PCT application is deemed a US application
--> there was no comment on so-called by-pass route continuations from a PCT, wherein one files a continuation of the PCT
--> there is no such thing as a continuation-in-part of a provisional. One can assert priority to the provisional filing date for a claim that is supported by the disclosure in the provisional.

IPBiz may revisit this later.


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