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?
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