Q: Can a PCT appl. claim priority to a US utility appl., and not the earlier provisional (w/ public disclosure in between)?
R. Fish writes "There is no requirement that the earliest claimed priority date is actually the date of the earliest filing anywhere. It is perfectly acceptable, for example, to file a provisional U.S. application in January 2009, a utility in December 2009, and then file the PCT application in August 2010, claiming priority only to the December 2009 utility." Is statement still true however, if there was public disclosure in February 2009?
A:
First -- I am assuming that the disclosure was a public disclosure. A disclosure under a non-disclosure agreement to a potential client does not count as a disclosure in many systems.
For systems that want absolute novelty, you would need to claim back to a priority document that preceded the February 2009 public disclosure. If the provisional filed in January 2009 had all the relevant material that was disclosed in February 2009, then you would need to claim back to that document. If the provisional filed in January was not much more than an abstract and not a document sufficient to enable someone of skill in the art to make and use what was disclosed in February of 2009, then you have problems for any absolute novelty countries.
A PCT application is the front door to many patent systems. If you use the PCT filing to go into other systems such as the US that tolerate filing within a year after a public disclosure (but not a public use or public sale), then claiming back to the January 2009 document would not be critical.
Note -- many systems require absolute novelty so there may not be much use of filing a PCT application if there is already a US application pending.
On another front, the situation with respect to filing a PCT application and not claiming back to the earliest patent application for that invention is a bit more complicated and should be discussed with a patent attorney with the specific details of what was disclosed and what you hope to claim. You did not say whether the December 2009 non-provisional claimed priority back to the January 2009 provisional application. If it did not as the provisional application was not really worthwhile, one could argue that by August 2010, the January 2009 provisional had expired and could not be claimed through the non-provisional so the December 2009 non-provisional was the only application that existed as of August 2010.
I hope this helps.
Kevin E Flynn
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