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Xavier residing in Canada, a NAFTA country, files an application for a Canadian patent Monday, September 18, 2000. At the same time, Xavier forwards a copy of the Canadian application to registered practitioner Young in the United States, asking that Young prepare a U.S. application based on the Canadian application and claim the benefit of the Canadian filing. Young advises Xavier on the relative merits of filing a provisional versus a non-provisional application and Xavier decides to have Young initially file a provisional U.S. application. Young prepares the application and files it as a provisional application on Friday, January 19, 2001, claiming the benefit of the Canadian application. In August 2001, Young reminds Xavier that the filing was only provisional and that Xavier must decide whether to file a non-provisional application. In early January 2002, Xavier directs Young to get a non-provisional application, with a certified copy of the English language Canadian application, into the Office, which Young does on Friday January 11, 2002. Young files no other correspondence prior to the first Office action. Which of the following is true?
“X is not entitled to the Canadian application priority date because the nonprovisional application was filed more than one year from the filing date of the Canadian application.” I find this statement to be incorrect. How can the January 2001 filing be more than a year after the September 2000 filing. Is this a typo or am I simply misunderstanind something?
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2 Replies
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It is due to the filing of the provisional application. Provisional Applications can serve as the basis for a priority claim, but they cannot claim priority to other applications. So, by waiting so long to file the non-provisional application the practitioner in this problem waived the right to claim priority to the Canadian application.
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I see my mistake. Thank you.
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