Shortcut to ABCD Patent Strategy?
I have a question with respect to lesson #3 of the Patent Strategy Course
I have filed A and B at EPO and I am planning to file the C application. I have 4 months left into the priority year.
Should I now file a non-provisional EP patent application for A + B + C and claim the priorities of A and B
should I file a provisional patent application for A + B + C without claiming the priorities of A and B, and wait until the end of the priority year, and only then file a provisional patent application for A + B + C (and possibly for C) which claims all the earlier priorities?
In very short words: it is never good to prematurely claim a priority right of an earlier patent application. Although the Art. 4 Paris Convention (the Mother of International IP Strategy) does not speak of an exhaustion of priority rights (ie, whether or not the same priority right might be validly claimed in more than one European patent application), the national case law on this matter is not consistent.
Here are two EPO Appeal Board decisions that can be interpreted as conflicting each other:
Please note that the Appeal Board took a 5 days long hearing in T 001/15 in order to decide in favour of the applicant, which translates to high 5-digit costs.
I would rather play safe if there are no reasons for an early filing date before the expiry of the priority year.
Further, Art 4.C(4), second sentence Paris Convention is meant for "previous applications" with a filing date before the priority year:
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
There may be problems if there is a third "C" patent application filing at a later time that is intended to claim the priority of the first "A" patent application filing.
I think that it is to better to avoid this by filing a provisional patent application now, following lesson #3 https://ip-lawyer-tools.com/course/patent-strategy-basics/.