If a US regular patent application claims the benefit of the filing
date of a foreign patent application, and assuming that the inventor
does not request to block publication of the US application, what will
be the date of publication of the US application?  (a) 18 months from
the filing date of the foreign application (i.e., 18 months from the
earliest priority date), or (b) 18 months from the filing date of the
US application?
I need a citation to and quotation from either US patent law or the
MPEP (Manual of Patent Examining Procedure).
Thanks.

Hello, 

There seems to be some contradiction between the USPTO website and the
patent law itself.   For all intents and purposes, I refer to the
patent law, which can be found at:
http://www4.law.cornell.edu/uscode/35/

The quick answer is :  18 months from the start of the publishing
date, provided another application (either international or national)
does not fall within the abandonment period.


Here's the skinny:

Under 35 U.S.C. Part II, Chapter 11, Sec. 120: 

"Sec. 120. - Benefit of earlier filing date in the United States 



"An application for patent for an invention disclosed in the manner
provided by the first paragraph of section 112 of this title in an
application previously filed in the United States, or as provided by
section 363 of this title, which is filed by an inventor or inventors
named in the previously filed application shall have the same effect,
as to such invention, as though filed on the date of the prior
application, if filed before the patenting or abandonment of or
termination of proceedings on the first application or on an
application similarly entitled to the benefit of the filing date of
the first application and if it contains or is amended to contain a
specific reference to the earlier filed application."

http://www4.law.cornell.edu/uscode/35/120.html

Essentially, provided you file during the 12-month Abandonment Period,
and you -include- listing of the prior patent application, there IS no
bonus in the first filing date.  These mind you, are for provisional
patents, which seem to be what you're calling 'regular'



35 U.S.C. Part IV, Chapter 36, Sec. 365 says:

SEC 365.  Right Of Priority; benefit of filing date of a prior
application.

Sec. 365. - Right of priority; benefit of the filing date of a prior
application


(a) 

In accordance with the conditions and requirements of subsections (a)
through (d) of section 119 of this title, a national application shall
be entitled to the right of priority based on a prior filed
international application which designated at least one country other
than the United States.

(b) 

In accordance with the conditions and requirement of section 119(a) of
this title and the treaty and the Regulations, an international
application designating the United States shall be entitled to the
right of priority based on a prior foreign application, or a prior
international application designating at least one country other than
the United States.

(c) 

In accordance with the conditions and requirements of section 120 of
this title, an international application designating the United States
shall be entitled to the benefit of the filing date of a prior
national application or a prior international application designating
the United States, and a national application shall be entitled to the
benefit of the filing date of a prior international application
designating the United States. If any claim for the benefit of an
earlier filing date is based on a prior international application
which designated but did not originate in the United States, the
Commissioner may require the filing in the Patent and Trademark Office
of a certified copy of such application together with a translation
thereof into the English language, if it was filed in another
language"

http://www4.law.cornell.edu/uscode/35/365.html



So for the rehash: 

(a) States that the national patent has priority over all foreign
applications not designating the US originally;
(b) States that a foreign application has priority over OTHER foreign
applications if they designate a country other than the US;
(c) Patents designating the US as the filing company (either foreign
or domestic) shall be entitled to the benefit of the prior filing
date.  It doesn't matter which way, or who filed what first, provided
the international patent designates the US.

In a nutshell, there is no protection for filing early, provided
someone apply before the abandonment period listed in Section 120.   I
hope this helps, and includes the citations you need.


If I'm wrong, I'll be happy to do the digging to fix it: ) 

You can find all of this by searching the cornell site.  The queries I
used were:

Application +18 Months and 
Foreign. 

This was fun, I hope it helped you some, 

BitMaven-ga

---

Request for Answer Clarification by dan89-ga on 27 May 2002 02:52 PDT

Dear Bitmaven,
I see you put some time into your answer, but, unfortunately, your
answer wasn't actually the answer to my question.  Your answer and
citations were directed towards whether a US application can derive
the benefit of the filing date of a foreign application, whereas my
question is what will be the publication date of a US application
which claims priority from a foreign application.

Incidentally, in case this will help you continue your search, a
provisional application is NOT a regular application.  These are
technical terms in US patent law.  (A regular patent application gets
examined, whereas a provisional application only secures a filing
date, such that a regular application can be filed within 12 months.)

I look forward to your continued feedback.
Dan89

---

Request for Answer Clarification by dan89-ga on 27 May 2002 04:48 PDT

I'll note also that the law changed recently, such that applications
filed after a certain date will publish.  Thus, if the site you were
looking at at Cornell is old, it may not contain the needed
information.  My guess is that the USPTO site should have the correct
information.

---

Clarification of Answer by bitmaven-ga on 28 May 2002 00:50 PDT

dan89, 

First off, sorry for the delay. Hopefully with your clarification I
can provide a more accurate answer to your request.


"revising the rules of practice in patent cases to implement certain
provisions of the American Inventors Protection Act of 1999.  These
provisions... provide, with certain exceptions, for the publication of
pending patent applications (other than design applications) at
eighteen months from the the earliest claimed priority date"

Effective Date November 29, 2000. 

Applicability Date: Sections 1.103(d),
1.211, 1.213, 1.215, 1.217, 1.219, and
1.221, and the changes to §§ 1.14, 1.55,
1.72, 1.78, 1.85, 1.99, 1.137, 1.138, and
1.311, apply to any patent application
filed on or after November 29, 2000, and
to any patent application in which
applicant requests voluntary
publication.
 
 
 These provisions
 of the American Inventors Protection
 Act of 1999 provide that, with certain
 exceptions, applications for patent shall
 be published promptly after the
 expiration of a period of eighteen
 months from the earliest filing date for
 which a benefit is sought under title 35,
 United States Code (‘‘eighteen-month
 publication’’).
 
 
 
 Section 4502 of the American
 Inventors Protection Act of 1999
 amends 35 U.S.C. 122 (35 U.S.C. 122(b))
 to provide that applications for patent
 shall be published promptly after the
 expiration of a period of eighteen
 months from the earliest filing date for
 which a benefit is sought under title 35,
 United States Code, and that an
 application may be published earlier
 than the end of such eighteen-month
 period at the request of the applicant.
 
 
 First, applications are not published if they fall under a certain
group of criterion:
 
 a) they're no longer pending
 b) They're subject to a secrecy order under 35 U.S.C. 181
 c) Its a provisional Application under 35 U.S.C. 111(b)
 d) or its an application for a design patent under 35 U.S.C. Chapter
16.
 
 Second, applications are not published if the applicant fails to
disclose that the patent
 will be the subject of an application in another country that
requires an 18-month publication.
 See 35 U.S.C.122(b)(2)(B)(i)–(iv).

 Third: "If an applicant has filed an applications in one or more
foreign
countries, directly or through a multilateral international agreement,
and such foreign-filed applications" are not as extensive
(paraphrasing for brevity here) the applicant may submit a redacted
copy of the application filed in the Office, elminating any parts that
were not included in the foreign country's application. "If the
redacted copy of the application is received within sixteen months
after the earliest filing date for which a benefit is sought under
title 35, United States Code, the Office may publish only the redacted
copy of the application. See 35 U.S.C.
122(b)(2)(B)(v)."


Section 4503(a) of the American Inventors Protection Act of 1999
grants that no right of priority exists  under 35 U.S.C., 119(a)(d)
unless a claim is filed with the office identifying the foreign
application, specifying the applicaiton number, the IP authority, and
the date of filing.

See: 35 U.S.C. 119(a)(b)(d)
http://www.uspto.gov/web/offices/dcom/olia/aipa/pgpf.pdf


Also the 18-month publication provisions apply to patents filed under
35 U.S.C. 111(a) on or after November 29, 2000 and to applications in
compliance with 35 U.S.C. 371 that resulted from international
applications filed under 35 U.S.C. 363 on or after November 29, 2000.


With certain exceptions, utility and plant applications for patent
filed on or after November 29, 2000, including international
applications which are filed under 35 U.S.C. 363 on or after November
29, 2000 and are in compliance with 35 U.S.C. 371, shall be published
promptly after the expiration of a period of eighteen months from the
earliest domestic or foreign filing date of the application.

http://www.uspto.gov/web/offices/dcom/olia/aipa/overview_of_eighteen_month_publication21.htm


Other bits, since I didn't know the country-context in this case: 


Countries that do not require publication at 18-months currently
include Algeria, Belarus, Belgium, Iran, Iraq, Kazakhstan, Malaysia,
Mongolia, Morocco, Philippines, Saudi Arabia, Syria, and Vietnam.
There is no provision to accept this request after the filing date of
the application, as the requirement for any request for
non-publication to be made on filing is a statutory requirement.


Further, a regular plant/utility application filed prior to November
29, 2000 will only be published if applicant requests publication

the fee for publishing an applicaiton on or after November 29, 2000 is
$300.

http://www.uspto.gov/web/offices/dcom/olia/aipa/overview_of_eighteen_month_publication21.htm


Summing it up:

Published after 11/29/00, means that one will fall under the new law,
which will allow publication from the earliest publication date,
assuming that you follow their rules.  Since you did not list when the
publication date of this question was, I'll assume that this is what
you're looking for.

If this is not sufficent, let Google know, as I think I've done $5
worth of work :)


Search Terms relevant: 

"foreign" +publication +regular +USPTO
All were found, as per your clarification on the USPTO website.  

Hope this helps, at least some.  My, patent law is  a bear.  

bitmaven-ga

In the second round, your answer was fine and what I needed.  (IMHO, I
thought that my original question was clear, and that my clarification
was more a re-statement rather than a clarification, but all's well
that ends well.)
Thanks.