The patent system allows for the filing of a provisional patent application in your home country. During the 12 months following this provisional filing you also have the right to file complete national patent applications claiming protection in overseas countries under the Paris Convention, and claiming priority back to the filing date of your provisional patent application.
If you want to keep your right to file in overseas countries (while claiming priority to you provisional patent application) alive after this date, you will then need to file a PCT patent application. Filing a PCT patent application effectively extends the deadline for filing in overseas countries, giving you the right to file patent applications in any of the 150 countries that are member states of the PCT – typically up to 30 or 31 months from the filing date of your original provisional patent application (with a few exception countries like Luxembourg, Tanzania and Uganda).
But what happens if you miss this 30/31 months deadline for filing national phase patent applications?
Well, there are some countries that still allow for filing after this deadline, as long as extension fees are paid. These countries include:
- Canada (12 months extension to 42 months)
- China (2 months extension to 32 months)
- Indonesia (12 months extension to 43 months; an affidavit may be required)
- Philippines (1 month extension to 31 months)
- Serbia (30 day extension past 30 months)
- Turkey (3 months extension to 33 months)
- Singapore (18 months extension up to 48 month)
In Europe, the European Patent Office (EPO) provides for the “further processing” of international applications where national phase applications haven’t been filed before the normal 31 month deadline. The EPO will issue a notice that the application is considered withdrawn, after which you have two months to request further processing and pay the required fee.
In Australia an extension of time is available under section 223 – if the failure to file by the deadline was due to “circumstances beyond the patentee’s control”, or due to an “error or omission” by the patentee or their agent. However, no extension is available as of right.
PCT Rule 49.6
The Patent Cooperation Treaty also allows for a means for the reinstatement of rights, if national phase entry is missed “unintentionally” or “in spite of due care required by the circumstances having been taken”.
Most countries have made use of this rule, and have inserted clauses into their Patents Acts that provide for the reinstatement of rights where one or the other, or both, of these standards are met.
Some countries have taken a “reservation” on PCT rule 49.6, so that the reinstatement provisions do not apply. Thankfully many of these countries are the same ones listed above that allow for extended deadlines. However, you will need to look at each country separately.
So if your patent application has passed the deadlines for national phase entry and you haven’t yet filed patent applications in all of the countries you would have wanted, don’t give up hope. Depending on timescales and circumstances, an extension of time may still be available.
To find out whether you can still extend patent protection to useful target markets, give our experienced patent attorneys a call today.