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Extremely difficult situation with PCT

Extremely difficult situation with PCT
« on: July 13, 2020, 02:39:45 PM »
Hello

I filed my PCT a month ago. I realised I forgot to mention a version of my design that I think it would be quite an obvious alternative as it has been developed already in other devices similar to mine. However, I do not explicitly mention it in my application. The main claim of my application is kind of broad that may include this missed alternative.

1) Is it possible to amend the PCT or cancel it, file a new one and claim priority over the previous? So that I won't lose my original priority which is a year ago.
2) If not, can I cancel it and file a new one but in the meantime I have disclosed it to others via emails which are not explicitly mentioned as confidential although I told them to treat it as confidential? Or these communications will render my new patent application useless?
3) If I keep the PCT, can I file another application with the same description and an additional paragraph describing the alternative version to protect this alternative design? If it is not granted as non inventive, will that mean that others can use that alternative design and circumvent my original patent or it will mean that it will be already protected by my initial patent?

What is the best approach to this please? I am really devastated!

Thanks!

Brad

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Re: Extremely difficult situation with PCT
« Reply #1 on: July 13, 2020, 04:26:11 PM »
This is very common but also very hard to fix cheaply.

I have no idea what your budget and goals and intended market are so please don't follow this advice but what we normally do is file what is called a "bypass continuation" in the US Patent Office that links back to both your priority document and your PCT and includes the new design.

This accomplishes two things:
1) it adds in your new design relatively cheaply (you can file in the US for either $430 or $785)
2) it keeps your priority chain in tact

The downside is this only works for the USA only so if your goal was to file this in countries outside the USA than the new design may have to wait until when/if you want to nationalize in those other countries.

Quite honestly I have never seen a small company or inventor file in more than a few countries anyway as the patent costs can easily reach over $100k so if that is your patent budget then you should really be working with a firm to walk you through these issues.

Also, if the design change is minor and does not really impact the core functionality of the invention you may just want to wait and include the new design at the time your PCT expires and you have to file in each country.  Its a bit risky to wait but likely not a big deal if the design change is minor enough.

Hope that helps.
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Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: Extremely difficult situation with PCT
« Reply #2 on: July 30, 2020, 04:33:59 PM »
Thanks Brad.

May I ask why would it be risky to add the alternative version of the invention at the national phase? Won't I have priority from the date of the PCT filing? If not, I have filed a new application few days before the publication of my PCT, could that be used to offer priority if the material is to be added to the PCT?

I am also worried whether the addition at the national phase is considered 'added matter' and raises objections (especially at the EPO). Is there a way to find that out early?

Thanks!

Brad

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Re: Extremely difficult situation with PCT
« Reply #3 on: July 31, 2020, 09:02:21 AM »
I cant answer any questions about the EPO as they have their own rules and guidelines that I am not very familiar with.

In the US you could wait and just add the new material at the time you file the national stage (assuming its still secret or was made public less than 12 months from the date you file the national application).   This is risky because you will NOT have priority to the new material because the new material was not included in any earlier application.  It is rare but I have seen cases where someone else publishes something on the new material before you get your national stage application filed and that publication can serve as prior art to the new material you are trying to claim.

As you suggested one solution may be to file the new design now in a US provisional application.   Then, at some point within the next 12 months (and before your PCT expires) file your national stage application that links back to both your PCT and your US provisional application.    This should work in the US but not sure if it works in EPO or other places. 

You would likely have to hire an EPO attorney to run through all these questions with and they are not cheap.  I dont know any that would work directly with an inventor.   

My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.