Lynch LLP Warns of Perils of International Prosecution
Late to File a Patent Cooperation Treaty Application? Reconsider Filing at All
SOUTHERN CALIFORNIA, CALIFORNIA, USA, August 15, 2022 /EINPresswire.com/ — Lynch LLP Warns of Perils of International Prosecution
Late to File a Patent Cooperation Treaty Application? Reconsider Filing at All
Filing late on Patent Cooperation Treaty (PCT) applications is an issue all US patent practitioners should be aware of. Those who have experienced this will find the advice below obvious in hindsight.
In PCT practice, those filing have one year to file after filing an originating document. For example, a US patent application is filed on July 1, 2022 and a full PCT application must be filed within one year, or by July 1, 2023.
“Things can go wrong,” said Sean Lynch, partner at Lynch LLP. “Sometimes the money doesn’t exist in time to complete a filing, or 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 that priority. You can usually safely file after the priority deadline of July 1, 2023.”
Lynch said, “If you’ve used the UPSTO as an international receiving office, for example (we often do this for small entities because the fees are discounted), 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 generally a rubber stamp process. But that’s also where you get into trouble.”
OTHER COUNTRIES DON’T CARE ABOUT THE USPTO STANDARD FOR RESTORING PRIORITY
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If priority has been restored due to an unintentional delay, the application enters the national phase. Unfortunately, if it is discovered that the countries where the application has entered the national phase don’t share the same standard as the US Patent and Trademark Office for priority restoration, or those countries don’t recognize the priority document at all, then the entire content of the parent US patent application is now prior art that works against the national phase application, essentially killing the effort completely and wasting money in the process.
DIFFERENT COUNTRIES HAVE TOTALLY DIFFERENT STANDARDS
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Here are some key examples (see https://www.wipo.int/pct/en/texts/restoration.html):
– The EPO requires the deadline to have been missed despite taking “all due care.” The “all due care” bar is high, and if a client simply ran out of money or otherwise spaced out, the filing entity is 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, one can restore priority, but the application must be submitted for restoration within 2 months of the missed deadline. By time an application enters the national phase, that time window is in the rear view mirror.
And so on. There are some edge cases (e.g., in some places one can file national phase application up to 32 months out from the original priority date), but for the most part, it could be too late. Ask a lawyer for specific advice if a deadline has been missed.
But more importantly: don’t miss a deadline.
About Lynch LLP
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Lynch LLP helps clients large and small protect their inventions across a wide range of practice areas. We have specialized expertise in a wide range of technical fields and focus our practice on providing strategic guidance and services including patent prosecution as well as strategic patent counseling. We also have experience with clearance searching, prior art searching, product licensing, as well as litigation and enforcement of patent and other intellectual property rights.
Patent attorneys at Lynch LLP have focused technical backgrounds that give us the breadth of scientific knowledge to write patent applications that not only capture a new and novel invention, but that also create an umbrella of coverage extending beyond the exact confines of the invention. We combine our experience as patent attorneys with our experience with patent litigation to prepare and file patent applications of all types that are created to withstand scrutiny and to maximize enforceability. Our expertise extends into negotiating and drafting licensing agreements.
We have experience representing plaintiffs and defendants in a wide variety of proceedings before courts and the USPTO, crafting patent strategies that complement and further our clients’ business interests.
We have experience filing utility patents and design patents to protect all aspects of your invention. Visit Lynch LLP at www.lynchllp.com to set up a free consultation.
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