AVVO Q&A with Dr. Adli:
Q: For patent amendment, what is the different between "Cancel" and "Withdraw"? What is the different between them? If one of my dependent claim is no longer important or useful, should I set it as "cancel" or "withdraw"?
A: Although pro-se inventors and even patent practitioners use them interchangeably, the terms have distinct meaning and implications in patent practice. A withdrawn claim means the claim is "held in reserve" and can come back into consideration later. Typically, a "withdrawal" of a claim in made in response to an examiner's determination that the application includes more than one invention. In that case, the examiner issues what is referred to as a "restriction" requirement, requiring the inventor to choose one invention for consideration by the patent examiner. In response, the patent applicant may choose to "withdraw" a claim or set of claims, while at the same time objecting to the examiner's view of the invention(s). If the examiner backs off, the withdrawn claims can be added back to the claims submitted for examination.
On the other hand, a "cancelled" claim is one that is eliminated and will not come back. Regarding your particular case, your patent attorney would be in a position to evaluate your case to advise you on how to proceed. Good luck.
Q: If my invention has been published on USTPO, can I still file international application in other countries? I didn't use PCT when I file my patent application to USTPO. My invention has been published on USTPO and now I want to apply international patent in other countries. What can I do? For example, China only accept foreign application via PCT, should I resubmit my patent as new application to PCT?
A: I am afraid you are probably out of luck. Generally, under the Paris treaty, you have one year to file an international application from the date of your first filing. If you had filed an original application under the Patent Cooperation Treaty (PCT) then you would have had 30 months (or 31 months in some countries) to file application(s) in individual member countries. Since you did not meet the 1 year Paris deadline and did not file under PCT, you have lost the opportunity to obtain protection for your invention elsewhere. Keep in mind that you still CAN file other applications if you make improvements or changes to your invention that qualify for patent protection. Your patent attorney would be in a position to evaluate your case to advise you on how to proceed. Good luck.
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