Figuring out PCT patent filing deadlines isn’t always straightforward. There are two issues at play when you reference “deadlines.” One deadline can be a priority deadline. You need to meet this deadline so that your next filing receives the filing date of a previously filed application (i.e., the priority date). The Paris Convention (which guides portions of the PCT) has a 12-month priority deadline. That goes for U.S., Paris Convention Members and 153 PCT Member States.
Priority Claim Deadline
For the purposes of foreign filing, a provisional application and non-provisional receive the same treatment. In other words, that 12-month clock to file a PCT application starts ticking from the earliest filing date. If you file the following sequence of patent applications:
- A provisional application filed on January 1, 2000, (OK)
- A non-provisional application filed on June 1, 2000 claiming priority to the provisional, (OK)
- A PCT application filed on March 1, 2001 (PCT cannot claim priority to either the provisional or the non-provisional)
Article 4.C(4) of the Paris Convention dictates that the 12-month window for filing a PCT application commences on the filing date of the earliest application in the family. Accordingly, in the above scenario, if the PCT is filed on or before January 1, 2001, it will be entitled to the priority date of the provisional filing. However, if the PCT is filed after January 1, 2001, the PCT cannot claim priority to either the provisional or the non-provisional application. Without the priority claim, the novelty of the subject matter disclosed in the PCT would be negated by the non-provisional application (unless the non-provisional is abandoned prior to publication).
Statutory Bar Deadline
The second issue of PCT patent deadlines is that of statutory bars resulting from publication. In the university environment, inventors have a strong incentive to publicly share their research at an earliest date possible. So, let’s add to the scenario above:
- Filed a provisional on January 1, 2000, (OK)
- Disclosed invention February 1, 2000, (OK)
- Filed a non-provisional on June 1, 2000, (OK)
- Filed a PCT application on March 1, 2001 (PCT Fails)
In the above-mentioned scenario you lost your provisional priority date for the PCT. Foreign countries have an absolute novelty requirement meaning there a public disclosure before the filing date can negate possible patent rights in the disclosed invention. Consequently, since the PCT couldn’t use the provisional filing date (outside 12-months), it had to use the non-provisional filing date which was AFTER the disclosure.
Need patent protection in foreign countries?
The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have an opportunity to continue building your patent portfolio and expanding your patent rights by filing a continuation patent application. Interested in finding out more about the advantages of filing a continuation patent application? Read on.
A patent is a barrier to competition. Well-informed patent attorneys seek to anticipate how competitors will attempt to design around the patent claims. While broad claims are sought, they must also be drawn with precision to avoid invalidity in view of prior art. Sometimes, neither inventor nor patent attorney can anticipate how a technology may evolve. After a patent is granted, a patent holder has very limited avenues for changing the scope of patent coverage. The two most commonly-used methods for accomplishing this objective are as follows:
- Reexamination: Either the patent owner or a third party challenger may cite new (or unapplied) prior art arguments against an issued patent. This procedure is frequently initiated in response to litigation seeking to cancel patent claims.
- Reissue: A patent reissue is often filed when prior art was inadvertently withheld during patent prosecution or the patent claimed too much (or too little). A patent’s scope can only be broadened within 24 months after it issues. After that, reissue amendments can only maintain or narrow the scope of coverage.
Both reexamination and reissue proceedings can be expensive and create new liabilities in the protection of an invention. However, there is another cost-effective method: filing a continuation application prior to the issuance of the “parent” application.
Advantages of a continuation patent application
A continuation patent application must have the same specification and drawings as the parent application. However, the continuation application can have a different claim scope. Therefore, a continuation application provides an opportunity to broaden or modify patent coverage for your invention. Because the continuation (the “child” application”) claims priority to a co-pending “parent” application, their patent terms are “coterminous.” Accordingly, continuation applications do not “extend” the patent term. However, by keeping at least one “child” application alive, the patent holder may update, modify, and even include additional subject matter in a later filed “continuation in part” (CIP) application.
In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination. You can find more details about deferred examination here.
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