Can you file a late foreign patent application based on Paris Convention?
We’ve talked about filing late PCT and national stage applications. But, what if you are thinking about filing a direct foreign patent application claiming priority to a US priority application? What are your late foreign patent filing options under the Paris Convention? More specifically, can you file any late foreign patent applications if over one year has passed from the earliest US priority date? Let’s look at a few scenarios.
Can you file a late foreign patent application claiming priority to only a US nonprovisional, but not an earlier US provisional filed over 12 months ago?
Ideally, all foreign patent applications should be filed within 12 months of a US provisional patent application. Unfortunately, things don’t always go as planned. Suppose an applicant filed a US provisional and, 11 months later, a US nonprovisional claiming priority to the US provisional. Now assume that over one year has passed from the provisional filing date, and the applicant wants to file a foreign application.
For example, let’s say 16 months have passed from the US provisional filing date. That means that it has been over one year since filing of the provisional, but within one year of the nonprovisional filing date. Can the applicant file a foreign patent application under the Paris Convention?
Maybe. It depends upon whether the nonprovisional contains new matter. Let’s see why new matter matters.
What does the Paris Convention say?
To answer our question about possible late foreign patent options, we need to go to the source, the Paris Convention. Under Article 4(C), we find the relevant rules for filing conventional direct priority foreign patent applications:
(1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.
(3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union, shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
https://www.uspto.gov/web/offices/pac/mpep/mpep-9035-appx-p.html
How does the Paris Convention treat a nonprovisional claiming priority to a provisional?
So, let’s unpack this. When a US nonprovisional claims priority to a US provisional concerning the same subject, the nonprovisional would be the subsequent application. Under Paragraph (4) above, the provisional would be the previous application. And, a subsequent application (nonprovisional) can serve as the priority date if the previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection.
What if your nonprovisional describes and claims new matter not included in your provisional?
An argument can be made that a subsequent nonprovisional application does not concern the same subject as a previous provisional application. How? The nonprovisional adds and claims new matter not included in the provisional. Based on these grounds, an applicant can treat the nonprovisional as the first application and then file foreign applications within 12 months of the nonprovisional filing date.
What if you filed only a nonprovisional application, and more than 1 year has passed?
Let’s look another scenario. Suppose you filed only a US nonprovisional patent application. More than one year has passed from the nonprovisional filing date. So you missed your foreign filing deadline. You now wish to file foreign. Can you file late foreign patent applications in this scenario?
One option is to file a CIP application to describe and claim new matter. You can argue that the CIP is not a subsequent application concerning the same subject matter as a previous first application. Therefore, foreign patent applications may be filed within one year of the CIP filing date with a priority claim to only the CIP.
If you choose to go this route, there will be limitations. The foreign applications will get a later priority date than if you had claimed priority to the parent application. Also, the foreign applications must claim the new subject matter added to the CIP.
Need to file late foreign patent applications?
Contact US patent attorney Vic Lin or call (949) 223-9623 to explore the possibility of filing foreign patent applications. If you’re already late, don’t delay any further.
