When is the PCT national stage deadline?
Depending upon the country, the deadline for entering the national phase of a PCT application will be either 30 months (e.g., US) or 31 months from the priority date. Two and a half years may seem like a long time, but the national stage deadline can creep up quickly for a company not yet prepared to spend the money to enter the national stage of multiple countries. Is there anything that can be done to postpone this PCT national stage deadline? Let’s delve into how the PCT national phase deadline can be extended and the consequences of postponement.
How to postpone the PCT national stage deadline by withdrawing the priority claim
According to PCT Rule 90bis.3, an applicant may withdraw a priority claim in a PCT application anytime prior to the expiration of 30 months from the priority date. This option is apparently available only in PCT applications that claim priority to an earlier filing date. In other words, it will not work for cases where the PCT application itself was the first filing because such an international application will not have a priority claim. The option to withdraw a priority claim in a PCT application is also referenced in MPEP Section 1859.
Suppose an applicant files a utility patent application in their home country as the first filing on Day 1. We’ll call this first filing the priority application. The applicant then files a PCT application on Day 365, i.e., 1-year anniversary, with a priority claim to the priority application. The 30-month deadline is now quickly approaching, which we’ll call Day 910 (these days are imprecise and used for rough illustration purposes only).
Before this 30-month deadline passes, the PCT applicant may withdraw the priority claim to the priority application. Withdrawal of the priority claim gives the PCT application a later filing date by which the 30-month or 31-month deadline may be counted. You can basically push back the national stage deadline up to one year depending on the timeframe between the priority application filing date and the PCT filing date. For example, if your PCT application was filed 11 months after your priority application, withdrawing the priority claim will postpone your PCT national stage deadline by an additional 11 months.
What is the effect of withdrawing a priority claim?
When a priority claim is withdrawn, two potentially negative consequences may result from a later filing date:
- More potential prior art may be used against you; and
- You may have had public disclosures that precede your later filing date.
Making public disclosures of your patent-pending invention before your filing date may be fatal in certain countries that do not have the same grace periods as the US (US gives inventors a 1-year grace period).
More prior art
Your priority date is critical in determining which patents and patent applications may be used as prior art against you. Patents filed after your priority date cannot serve as prior art so the earlier your priority date, the better. When you have a later priority date, potentially more patent filings may become eligible as prior art.
Referring back to our above example, keeping the original priority date would mean that only references with a priority date earlier than Day 1 would count as prior art. By removing the priority claim, you now have a year’s worth of new references that may count as prior art. In particular, patent references filed between Day 1 and Day 364, which were not prior art in view of your original priority date, can now be used against you. This might not be fatal so you have to balance the pros and cons of more prior art as a tradeoff for more time.
Absolute novelty bar
Many foreign patent offices outside the US have a rule called the absolute novelty bar, or something similar. The absolute novelty bar precludes you from getting a patent in that country if you’ve made a public disclosure of your invention before your priority date.
Going to back to our example, suppose you publicly disclosed your invention on Day 100. Since your priority date has been pushed back from Day 1 to Day 365, you now have a public disclosure that was made before your new (later) filing date. This might be fatal depending upon the patent laws of whichever country you seek to enter.
Should you try to push back the PCT national stage deadline?
In order of importance, you should answer the following questions before deciding to withdraw your priority claim:
- Have you made any public disclosures before your new (later) filing date that would preclude you from patenting in certain desired PCT countries? Check the grace periods, if any, of each desired PCT country.
- Are you OK with the risk of more prior art being used against you?