Embarrassing question regarding "priority"

[redfarthammer]

I am prosecution an application having a Foreign Application Priority Date of July 2018 (filed in China). The application has a PCT filed date of May 2019, and a 371(c)(1)(2) date of December 2020. The Examiner rejected the claims using a reference having a US filing date of 2019 not claiming any earlier priority date. The reference is not considered prior art under Section 119, right?

[redfarthammer]

According to my math, the original application was filed in China July 2018, and the PCT was filed within 12 months (May 2019) of the original filing. The Section 371 date (December 2020) is the date of the US national stage filing, which is less than 30 months from the original Chinese filing. So, according to my math, the US national stage application has a valid claim of priority to the original Chinese filing.

I haven't looked at dates like these in a long time, so I just want to make sure I'm not missing something. Any feedback would really be appreciated.

[AbstractIdeal]

I agree that the reference should not be prior art based on the facts you laid out. Does the filing receipt show the priority claim? Does PAIR/Patent Center show the priority claim?

[two banks of four]

I agree that the reference should not be prior art based on the facts you laid out. Does the filing receipt show the priority claim? Does PAIR/Patent Center show the priority claim?

The original post left out three pieces of salient information:  1) whether the foreign priority was in English, 2a) whether the reference is an U.S. or WIPO publication (only types of references applicable under 102(a)(2)), and 2b) assuming the reference is an U.S. or WIPO publication, whether the filing date of the reference was before that of the PCT filing date of the application under examination.

The overwhelming likelihood is that the foreign priority application wasn't filed in English.  Assuming that were the case, and assuming the prior art were a reference applicable under 102(a)(2) and filed prior to the PCT filing date of the application, the cited reference would be applicable as prior art until and unless the foreign priority is perfected. 

And just to be fully clear, the issue is not that the priority document is foreign; rather the issue is that it's not in English.  A lot of foreign priority applications from various Scandinavian countries are filed in English; in those situations, they are "perfected" from the get-go. 

[lazyexaminer]

Agree with two banks of four, presumably you need to perfect the foreign priority date so you need an English translation. For completeness I'll add citations. See 35 USC 119(b)(3), 37 CFR 1.55(g)(3)(ii), MPEP 216. I'd have preferred that the examiner explicitly required this so you knew what was going on.

If the reference effective date is after the PCT filing date, I.e. the foreign date is not needed, the rejection is likely just improper.

[redfarthammer]

Thank you guys for that information, I knew I was missing some pieces. The reference is a US publication, and the foreign priority application was filed in English. Also, PAIR does show the Foreign Priority date as July 2018, which could be an acknowledgment that foreign priority was perfected, but I'm not sure.

lazyexaminer - the reference was filed in the US in April 2019, so about a month before my application's PCT filing date. But it sounds like I can disqualify the reference based on the foreign application date. Hopefully.

[lazyexaminer]

I wouldn't necessarily take PAIR as acknowledging anything other than confirming what is actually in the file.

If the priority document was in English and the examiner did not mention it I think they simply messed up, unless there is something else I am not seeing. It is still possible you aren't entitled to foreign priority if that document does not support the claims, but if it is in English the examiner would need to do that analysis and provide explanation.

From MPEP 216:
"If the certified copy, and translation if necessary, is already in the file when the examiner finds a reference with the intervening effective date, the examiner will study the certified copy, if it is in the English language, to determine if the applicant is entitled to the priority date. If the applicant is found to be entitled to the priority date, the reference is not relied upon as prior art, but may be cited to applicant on form PTO-892. If the applicant is found not entitled to the date, the unpatentable claims are rejected on the reference with an explanation."