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PCT Filing Options after the 1-year deadline is missed

We often have clients who miss the 1-year PCT filing deadline, yet are still interested in filing a PCT but are not sure if it is possible when it is beyond 1 year since filing their Utility or PPA.

Matters are made worse if you received a Patent for the parent patent Application in question, whether here in the U.S, or anywhere in the world, or if the parent patent Application otherwise was published.

Here is our general guidance on that situation:

Filing Utility or PPA applications starts the 1 year Paris convention clock ticking, which is the time given to file internationally. So, if you wish to preserve your international filing rights, you must file a foreign or international PCT patent application within 1 year of filing your Utility to claim benefit from your earlier Utility filing date.  Otherwise, you may be prohibited from patenting the corresponding invention in some countries.  That is, if you believe that your innovations corresponding to the filed US application(s) is/are important enough to secure foreign patent protection for, you must do before the 12 month deadline.  If the 12 month deadline is missed, yet you have never publicly sold or disclosed the invention, and it has never been published (e.g., normally 18 months from PPA filing), then normally you could still file a PCT application without problems, except that you would lose your earlier (expired) priority date.  You should be made aware that foreign countries follow a "first to file" system, so losing the earlier priority date could turn out to seriously harm or vanquish your foreign patent rights if intervening prior art is found which blocks your foreign patentability.  Please refer to my postscript for other important aspects of the PCT process and getting started.

As such, after you have passed 1 year since the Utility or PPA was filed or if it was ever published (e.g., you acquired a Patent for the Utility app) then you are barred from filing a PCT and getting new priority date.  Unfortunately, in such cases, there are no options because once the patent issues or it is published and after the 1yr deadline is passed, that publication is prior art blocking the PCT. Only non-obvious improvements are allowed after that.

However, if the parent application has never been published you may still file a PCT, receiving the later priority date, which is most often not a problem, esp. when any expected prior art is most likely older than a year ago.