When is the design patent foreign filing deadline?
The design patent foreign filing deadline is 6 months from your earliest design application. Generally, a US applicant will have 6 months from the US design patent application to file any foreign design patent applications. For non-US applicants, you have 6 months from your foreign design patent application to file a US design patent application with a priority claim to your first design application. As discussed below, certain extended deadlines for late filings might be available.
Need to file foreign design patent applications? Contact US patent attorney Vic Lin at vlin@icaplaw.com to request foreign design patent quotes.
What is a priority claim?
The filing date of your first design patent application is known as the priority date. By filing within 6 months of the priority date of your first design patent application, the foreign design applications will include a priority claim that gives your foreign applications the benefit of that earlier priority date.
Is there a late design patent foreign filing deadline?
Under certain conditions, the design patent foreign filing deadline may be extended an additional two months to 8 months from the priority date. For a late US design patent application, a petition to restore priority to a foreign application must be filed along with payment of petition fees.
Can a foreign design patent application be filed after 6 months from the US filing date?
Maybe. After six months from your US design patent application, you may have an additional 2 months to file any foreign design applications with a priority claim. Additional costs will apply to restore a right of priority to your earlier US design patent application.
After 8 months from your US design patent application, you can still file foreign design applications without a priority claim. This means that your foreign design patent applications will not have the benefit of your earlier US filing date.
Most foreign countries, however, have a rule that prevents you from obtaining a patent in their country if you made a public disclosure of your invention prior to the filing date. The rule is called the absolute novelty bar. Therefore, it makes sense to file foreign design patent application after 8 months from the priority date only if the following conditions apply:
- You have not yet publicly disclosed your design; and
- Your US design patent has not been granted.
Can a US design patent application be filed after 6 months from the filing date of a foreign priority design application?
After six months have passed from the filing date of the foreign priority application, a non-US applicant might still be able to file a US design patent application within 8 months from the foreign priority application. A right of priority to the foreign design patent application must be restored within eight months from the foreign priority date.
What if more than 8 months have passed from the priority date? Unlike most foreign countries, the US is more lenient. Any applicant may file a US patent application, whether design or utility, within one year of the earliest date of public disclosure.
Even without the benefit of a foreign priority date, therefore, a domestic or foreign applicant may still file a US design patent application as long as the US filing date is within one year of the earliest public disclosure of the design.
Hypothetical: Too Late to Claim Priority to Foreign Design Patent Application
For example, suppose a non-US applicant files a foreign design patent application on January 1 of this year. Over 8 months have passed since the priority date, and it is now December 1 of the same year. In our hypothetical scenario, let’s assume the foreign design patent was granted on May 1 of this year. The applicant did not make any public disclosures of the invention prior to the May 1st grant of the foreign design patent.
Can this applicant still file a US design patent application? Yes, a US design patent application may still be filed now in December since it is within one year of earliest public disclosure date which was May 1st. In fact, the applicant will have up to May 1st of the following year to file a US design patent application.
A petition to restore priority along with additional costs must be filed. For a small entity (e.g., individuals or company with fewer than 500 employees), there is a USPTO petition fee of $840 in addition to the initial filing fees (as of the date of this post).
Hypothetical: Too Late to Claim Priority to US Design Patent Application
Here is a hypothetical for US applicants. Suppose a US design patent application was filed on Jan 2 of this year. Over 8 months have passed, and it is now December 1 of the same year. Can the US applicant still file foreign design patent applications?
It depends. If the US applicant has not publicly shown the design up to now, they can still file foreign design patent applications without the priority claim.
What if they filed a Rocket Docket request which expedited the examination and led to the grant of the US design patent on July 1 of this year? The July 1st grant of the design patent would be considered a public disclosure. Since any foreign applications would lose the Jan. 2nd priority date, the absolute novelty bar would most likely prevent the US applicant from obtaining foreign design patents for the same design. Certain foreign countries have limited exceptions or grace periods.
