that was exactly the information I needed.

Best regards

If a U.S. application has priority to another application, it is entitled to the filing date of the priority application for the purposes of this analysis. So, for example, a potential prior art application published more than one year before a U.S. application was filed could ordinarily be cited as a reference by the USPTO regardless of the date of invention of the invention. However, where the U.S. application claims priority to a foreign application filed less than one year after the potential prior art application was published, the U.S. application would be entitled to the priority filing date, the potential prior art application would not have been published more than one year before that date, and therefore it could not necessarily be cited as a reference (depending on the date of invention).

You should keep in mind that in the U.S., priority is determined on a claim-by-claim basis. For example, in a continuation-in-part application, some claims may have support in an earlier application and be entitled to priority, while others may contain new subject matter and are not entitled to priority. Thus, a reference could be cited against some of the claims of the application, but not all.

For the reference, only U.S. priority is considered. Often it is the date of publication or issuance that matters, not the filing date, so priority is not relevant. When the filing date is at issue, it is only the filing date in the Unites States that is taken into consideration, so for example a U.S. continuation application is considered to have the filing date of its parent application for the purposes of determining whether the application was filed prior to the invention being made.

On the other hand, a U.S. application would not be entitled to the filing date of its foreign priority application for this purpose. For PCT applications filed on or after November 29, 2000 designating the U.S. and published in English, the international filing date or any earlier U.S. priority date is considered the U.S. filing date for purposes of applying the reference. Again, priority is considered on a subject matter basis, so to be entitled to the earlier priority filing date the subject matter at issue must have been adequately described in that priority application.

For more information, see http://www.uspto.gov/web/offices/pac/mpep/documents/0700_706_02_f_1.htm#sect706.02f1

Thank you for this very valuable article about the (US) complicate issue of determining which references might be cited (as you might well know, here in Europe it much easier to determine what is the state-of-the-art).

Could please you comment about the influence of the priority date, of both the application in question and the reference, for determining if the reference can be cited by the USPTO?

Thanks in advance!

ps.-Great blog