Perils of International Prosecution
If You’re Late to File a PCT Application, Reconsider Filing at All
This is an issue that all US patent practitioners should be aware of, and once it happens to you, it will be obvious in hindsight.
In PCT practice, you have one year to file after you’ve filed an originating document. For example, if you file a US patent application on July 1, 2022, you have until July 1, 2023 to file a PCT application. But things can go wrong, as we all know. Sometimes the money doesn’t exist in time to complete a filing, sometimes you receive instructions from your client late for whatever reason. This can feel like no big deal—your international receiving office probably has some mechanism for restoring priority. You can usually safely file after the priority deadline of July 1, 2023.
If you’ve used the UPSTO as an international receiving office, for example, then you will quickly discover there is a two month window in which you can restore priority. Great! The USPTO requires that the deadline have been missed “unintentionally,” which is often the case. But that’s also where you get into trouble.
Other countries don’t care about the USPTO standard for restoring priority
You’ve restored priority due to unintentional delay and you’re on your way toward the national phase. You enter the national phase. Unfortunately, you discover the countries where you have entered the national phase don’t share the same standard as the USPTO for priority restoration, and those countries don’t recognize the priority document at all. That means the content of the parent US patent application is now prior art against your national phase filings, which can kill your effort and waste money in the process.
Different countries have totally different standards. Here are some key examples:
The EPO requires the deadline to have been missed despite taking “all due care.” The “all due care” bar is high, and if your client simply ran out of money or otherwise spaced out, you may be out of luck.
In China, it is virtually impossible to restore priority according to Chinese patent law. The CNIPA may consider evidence of force majeure, such as lock down of the city, illness, and so on.
In France, you can restore priority, but you have to submit that application for restoration within 2 months of the missed deadline. By time you’re entering the national phase, that time window may be well in the rear view mirror.
And so on. There are some edge cases (e.g., in some places you can file national phase application up up to 32 months out from the original priority date), but for the most part, you or your client could be out of luck. Ask your lawyer for specific advice if you missed a deadline.
But more importantly: don’t miss your deadline.