International Patents: Grace Periods after Public Disclosures

International Patents

Are there any international grace periods to file a patent application after a public disclosure? If I file a US utility patent application, will that prevent me from filing additional patent applications internationally?

Once a public disclosure is made, the public disclosure bars the filing of a patent application in almost all jurisdictions. However, in the United States, there is a 12 month grace period starting from the public disclosure to file a patent application. A patent filing in the US does not count as prior art if we make a US filing before a public disclosure. Therefore, we have two routes to file applications in other countries. 

 

The original route is under the pairs convention, where patent offices part of the treaty agree to honor each other’s national filings for 12 months after the original-country filing. But – an Applicant would need to file in the other countries within 12 months of their US filing and meet all the local jurisdictional requirements, including translation (note: a translation filing is provided some grace period in some countries).  

 

The second route is through the PCT, which came after the Paris Convention, to make international filing easier and conform to practical reality. Under the PCT, you have 12 months from the US priority date to file a PCT application.  In turn, filing a PCT application gives the applicant another 18 months (30 months in total from the priority filing).  That gives applicants more time to consider their position, local prosecution outcomes, business considerations, and, most importantly, not scramble to obtain translations and foreign counsel in 25 countries all within 12 months.

John DeStefano, Technical Advisor

John DeStefano
Technical Advisor
[email protected]

Amit Patel, a business transactional attorney, began his career with a Big 4 accounting firm and now leverages his experience in formulating tax-advantageous strategies for clients. 

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