“We frequently simply re-file US provisional applications to start new one year periods where clients are not ready to proceed.”
The above quotation is from a US attorney handling a PCT filing on behalf of a US resident inventor. This response was given when, as representative of the beneficial Canadian owner, I inquired about abandoning the US provisional application prior to the filing of a further application in order to restart the priority date. Unfortunately, the abandonment of a US provisional application, while automatic at the end of 12 months from the original filing date, cannot be arranged on short notice prior to that deadline.
The regulatory entitlement to voluntarily abandon the US provisional application is not entirely clear:
USPTO MPEP 201.04(b) Provisional Application
The US patent office takes the position that a voluntary abandonment is not effective until it is entered by the office. They recommend that applicants allow a delay of three months for this to occur.
In these circumstances, what problems can arise by “ simply re-filing US provisional applications to start new one year periods where clients are not ready to proceed”?
Article 4C(4) of the Paris Convention provides that:
“ 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of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis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.”
Paris Convention Article 4 Priority right
Countries are not obliged to adopt all of the limitations in this paragraph but most probably do. Canada certainly does. The right to restart a priority date is limited in the Canadian Patent Act by the following:
28.4 (5) A previously regularly filed application mentioned in section 28.1 or 28.2 (i.e. the right to claim a priority date for each respective claim) or subsection 78.3(1) or (2) shall, for the purposes of that section or subsection, be considered never to have been filed if
(a) it was filed more than twelve months before the filing date of
(i) the pending application, in the case of section 28.1