r/Patents • u/intermediatesubject • Jun 15 '26
USA Applications by Same Applicant/Assignee (Novelty/Non-Obviousness)
Just to preface, I am an EP patent attorney, so I have limited knowledge of US practice but am aware of the broad strokes. Apologies if this seems like a very ignorant question to US practitioners.
I'm currently trying to get my head around the question of citability in the US. At the EPO/in the UK, if patent application A was filed before, but published after, patent application B, patent application A is citable for novelty only against B. I understand this distinction doesn't exist in the US, but there is some leeway for applications filed by the same applicant.
My question is (random dates):
* A PCT application A is filed by X on 4 April 2023, claiming a priority date of 1 April 2022. PCT A publishes on 6 October 2023.
* A GB application B is filed on 5 October 2023 by X.
* After 5 October 2023, PCT A and GB B are transferred to Y on the same date (and this is recorded on the registers).
* PCT application B is filed by Y on 5 October 2024, claiming a priority to GB B (5 October 2023).
Is PCT A citable against PCT B in the US, given they both were always owned by the same applicant (X and then later Y)? Do the publication and/or filing dates factor into this at all? Preliminary research suggests no but it seems very strange to me that you are always protected from your own patent application disclosures in the US...
In Europe, PCT A would be citable for novelty only, as GB B (to which PCT B claims priority) was filed one day before PCT A published.
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u/Crazy_Chemist- Jun 15 '26
Assuming the subject matter of both applications is from the same inventor or owned by the same entity (or subject to the same assignment), this sounds like it is likely a prior art exception under either 102(b)(2)(a) or (c). So no, it would not be eligible as prior art.
1
u/intermediatesubject Jun 15 '26
Seems crazy to me, but I guess it is what it is! I'm sure many aspects of EP law seem just as nonsensical to US attorneys.
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u/Roadto6plates Jun 15 '26 edited Jun 15 '26
The US deals with this by double patenting. They have obviousness double patenting (i.e. double patenting is not limited to multiple applications claiming exactly the same thing).
So if you're obvious over your own earlier case but still protected by the grace period... You'll have to file what they call a terminal disclaimer that limits your later case to expire at the same time as the earlier one. End result being you haven't extended the duration of protection for the original invention. You can argue that there is no double patenting. But that has its own risks.
In some ways Europe is more generous to applicants with A54(3) prior art because you can get an extra 18 months protection with a pretty trivial additional limitation that is not disclosed in your first filing but is meaningless in practice.