Is it possible to patent something that was disclosed in a priority application?

1

I disclosed a feature in a priority application 2 years ago but it was not included in my finally pursued application. Now the priority and the pursued application have been published. Is it possible to patent this feature? I was thinking something like a divisional application but I am worried that it may not be possible to claim it since it has not been included in the final application.

PCT-user

Posted 2021-01-24T10:49:49.660

Reputation: 93

answered in the question – George White – 2021-01-24T18:38:52.700

Answers

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This is definitely possible as it relates to the US -

(b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or a claim under § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or § 1.78 shall also be considered an incorporation by reference of the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).

If the priority claim was not present on the filing day then there must be a petition before the material from the priority document can be amended into the application.

George White

Posted 2021-01-24T10:49:49.660

Reputation: 21 648

0

Other than in the US (see George White's answer), you cannot if the priority application is not pending. The finally pursued application does not disclose the matter, hence you cannot protect it.

the Europeist

Posted 2021-01-24T10:49:49.660

Reputation: 1 183

I assume the OP can’t file a new application for the feature since the priority application represents prior art. Correct? – Eric S – 2021-01-24T22:39:15.133

@EricS That is right. From other questions of OP I believe the priority application was abandoned, but it became public through the public file of the PCT, so it is comprised in the state of the art as well. – the Europeist – 2021-01-25T07:40:59.923

I was thinking of this plan: to amend my pending PCT to include that feature (do I need to include it in the claims or simply in the description it would be enough?), then when the PCT is nationalised in EPO, to file a divisional application for this feature. Would that work? – PCT-user – 2021-01-25T09:18:52.670

@PCT-user How do you plan to amend the PCT? It appears to me that the window for incorporating matter from the priority application has expired by now. – the Europeist – 2021-01-25T14:46:28.767

Can I add it then at the national EPO phase? – PCT-user – 2021-01-25T16:02:10.263

@PCT-user You cannot. You can only protect what you have disclosed in the application as originally filed, in this case the PCT as originally filed. The content of the priority application can be used to incorporate a disclosure only during the time window for doing so, any amendment after that will have to be examined to see if it is present in the application as filed, and the priority application has no bearing in that. The relevant provision is Art 123(2) EPC

– the Europeist – 2021-01-25T18:01:18.503

@theEuropeist thanks so to conclude, there is no way to claim that content? I will have to come up with a novel and inventive feature to be able to claim it in another application? – PCT-user – 2021-01-25T18:21:50.677

@PCT-user Other than in the US and perhaps some other jurisdictions where the procedure explained by George White is permissible (I cannot think of any), yes, you have to file a new application and add something else to the feature so that it is novel and inventive over the priority application. You can also gamble and try to protect it anyway in another application, examiners do not usually review priority applications available in the Registers because they do not expect to be matter not present in later applications, but it is prior art and the feature is not novel. – the Europeist – 2021-01-26T08:46:42.800