Late US National Stage Entry and Nonprovisional with Foreign Priority Claims: How to Recover from Missed Deadlines

Late US National Stage Entry

So you missed the 30-month US national phase deadline. To file a late US national stage application, the entire delay must be unintentional. An applicant must file a petition to revive a PCT application for missing the national stage deadline.

Need to file a late US patent application? Call US patent attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore options and costs.

What are the requirements for filing a late US National Stage Application?

A late US national stage application based on a PCT application will require:

1. Petition for Revival of an International Application for Patent Designating the U.S. Abandoned Unintentionally Under 37 CFR 1.137(b);
2. Petition fee 37 CFR 1.17(m) ($840 for small entity);
3. Proper reply (i.e., the US national application and all necessary documents and fees associated with entering the US national phase);
4. Statement that the entire delay was unintentional (contained in Form PTO/SB64/PCT): “The entire delay in filing the required reply from the due date for the required reply until the filing of a grantable petition under 37 CFR 1.137(b) was unintentional.”

Note that terminal disclaimers are not required for international applications with an international filing date on or after June 8, 1995.

Beyond 12 Months from Foreign Utility Priority Date

Under the Patent Law Treaty, utility nonprovisional applications filed with the USPTO on or after December 18, 2013 will have the benefit of an additional 2-month grace period beyond the 12-month statutory deadline for claiming priority to a foreign application or provisional application if the delay was unintentional.

Applicants now have fourteen (14) months from the priority date of a foreign application to file the US nonprovisional or an international PCT application with the priority claim.

For a late PCT application to be filed after the 12-month priority deadline but within 14 months from the priority date, the international application must include a petition containing:

1.  A notice under PCT Rule 26bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application;
2.  The petition fee as set forth in § 1.17(m); and
3. A statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

See MPEP § 1828.01.

Will a late PCT application be accepted by all national stage countries?

Not necessarily. If a PCT application is filed late (e.g., 14 months from the priority date), certain countries might not honor a national stage application even if filed within 30 months from the priority date. See PCT Rule 49ter.1(g) and the countries of concern.

Beyond 12 Months from Provisional Filing Date

The above 14-month petition and filing deadline also applies to a nonprovisional claiming priority to a provisional patent application. Again, the delay must have been unintentional.

Beyond 6 Months from Foreign Design Priority Date

For unintentionally delayed US design patent applications, applicants have an additional 2-month grace period beyond the statutory 6-month deadline, resulting in an 8-month foreign filing deadline to file a US design patent application claiming priority to a foreign priority design application.

Petition to Restore the Right of Priority

Within this new 14-month deadline for utility applications or 8-month deadline for design applications, an applicant must file the US application along with a petition to restore the benefit of a priority application. The following are the required submissions for filing a late US patent application within the 2-month grace period.

What are the petition requirements?

A petition under 37 CFR 1.55(c) requires:

1. Petition fee under 37 CFR 1.17(m) ($2,100 for large entity, $1,050 for small entity as of date of this post);
2. Priority claim to earlier-filed application; and
3. Statement that the entire delay between the filing of the US application and the 6 or 12 month deadline was unintentional.

Elimination of Unavoidable Standard for Revival

For applications filed on or after December 18, 2013, applicants no longer need to show to the USPTO that the delay was “unavoidable,” a much tougher standard than “unintentional.” This lower standard also applies to reviving abandoned applications and reinstating issued patents by paying late maintenance fees.

When US Application Was Timely Filed Without a Priority Claim

The petition to restore the right of priority is distinguishable from a petition to accept an unintentionally delayed priority claim, the latter being applicable when the US application was timely filed (i.e., within 12 months of the priority utility application, or within 6 months for designs) but without a proper reference to the priority application, such as the failure to indicate accurate details of priority application in an Application Data Sheet (ADS). See MPEP Section 211.

Need help with a late US national stage or late priority claim?

Please contact US patent attorney Vic Lin by email or call (949) 223-9623 to see if we can still file your late US patent application.