The life of an industrial property title, such as a patent, is littered with important dates that should not be missed. While patent offices often allow a few extra weeks to respond to certain notifications, there is one deadline you absolutely must not miss: the international extension deadline.
A reminder of the stages in the life of a patent
From the date of filing of a patent application, it is possible to extend your patent application internationally within 12 months at the latest. If you’re not sure which countries to choose, you can benefit from a further 18 months (i.e. 12+18 = 30* months) by filing a PCT international application. The PCT allows the applicant to apply for protection in over 150 countries that have signed the Patent Cooperation Treaty within 30* months.
The PCT comprises an international phase and a national phase.
- The international phase at the end of the 12 months following the filing of the French patent application, which consists of filing the PCT, receiving the international search report, and seeing the publication of the application and the international search report on the databases.
- The national phrase at the end of the 30* months following the filing of the French patent application, where the countries of interest are chosen. If no country is chosen, the PCT “expires” and it is no longer possible to protect the invention abroad. For the countries selected, an examination phase begins with the Offices of the chosen States (USA, China, Brazil…). At the end of this phase, the patent may be granted, rejected or limited in each country, independently.
*31 months for Europe
Read more: The international patent application or PCT
If the administration often allows extra time to respond to notifications, one of the IMPROLONABLE deadlines, whatever the reason, is that of international extension!
What can I do if I miss the extension deadline abroad?
- You are between 12 and 16 months after filing for a French patent: extension period missed but patent not published
In this case, if the international extension deadline has been missed, and the patent application has not yet been published, you can withdraw the application by applying to INPI.
This will enable you to re-file the patent application, and benefit 12 months later from the deadline for international extension.
Be careful, the invention must not have been disclosed in the meantime! If you do, your new patent application will be rejected for lack of novelty. You’ll need to discuss with your patent attorney whether it’s better to keep the original application, which will still allow a French patent to be granted, or to withdraw it to keep the invention secret.
If it is possible to withdraw and then re-file the same patent because no disclosure has been made, it should be borne in mind that the anteriority date of the first application will then be lost. And any competitor who may have filed a patent application in the meantime could then be considered as the first applicant, and thus gain a monopoly on the same invention. You can, however, continue to exploit your invention, benefiting from the right of prior possession (you were in possession of the invention before him, as evidenced by your first patent application).
- You’re more than 18 months after filing your French patent: missed extension deadline AND published patent
Mr Trotar filed a French patent application in February 2017. He does not file the PCT extension in February 2018, and only pays the annuity for the French patent. 18 months after filing, in August 2018, the French patent application is published.
In October 2019, Mr. Trotar realized that his product was working well in Europe, and saw copies coming onto the market from China. He decides to protect his invention internationally.
Mr Trotar rushed to file an international application, the famous PCT, for which he had missed the deadline.
However, the authorities are not fooled, and the World Intellectual Property Organization will send him a search report arguing that the invention is not novel in view of his first patent of February 2017.
Why? Because Mr Trotar’s first filing in 2017 became his own prior art when it was published in August 2018. You can’t apply for a patent on an invention that has already been disclosed and/or commercialized. Even by yourself.
So there’s nothing more to be done to protect this invention internationally.
On the other hand, it may still be possible to protect the improvements and refinements made to the invention in France and abroad. Mr Trotar should consult his patent attorney to check whether these improvements are new and inventive compared with the first patent of February 2017.
How can an industrial property attorney help you avoid missing the PCT deadline?
It is not compulsory to use an industrial property firm to draft and file a patent application.
On the other hand, it is strongly recommended for a number of reasons
Read more: Draft a patent yourself or use an IP attorney
- The IP firm and deadline management
Industrial property firms generally work with database software developed specifically for their activity, and pay annual licenses for this software, which also enables them to manage deadlines. The cost of such IP software can vary from €4,000 to over €25,000 per year.
Each firm’s administrative department is responsible for entering the files, priority dates and notifications, and the software then automatically calculates the deadlines to be met, reminders to be made, annual instalments to be paid, and so on. The administrative department checks deadlines daily and sends reminders to clients. In this way, the industrial property firm is the guarantor of the correct follow-up of the patent application file with the various Offices.
- The IP practice is insured
Although each firm’s administrative department is well versed in the exercise, and is structured so as not to miss any deadline, it can happen, exceptionally, that a deadline escapes the department’s surveillance.
If you filed your patent application yourself, without consulting an industrial property attorney, you have only yourself to blame. The consequences of the missed extension period are irrevocable and irrevocable, despite all the excuses you might find for asking the Office for leniency.
On the other hand, if you go through an industrial property firm, you shouldn’t miss this deadline, but if you do, every firm has professional insurance covering the firm’s liability in the event of an error or oversight.
- Consulting firms
Of course, if you don’t want to miss a deadline, you have to know that it exists, and why it exists.
An Industrial Property firm has a duty to enlighten, inform and advise its clients on the strategy best suited to their budget, activity and aspirations.
Before filing a patent application, make sure you know all the costs involved in the life of a patent.
Calculate the cost of your patent over 5 years with our free cost simulator
- European IPCs and agents
An industrial property firm is made up of French patent attorneys who can represent clients in France before the INPI, and often, as at YesMyPatent, European patent attorneys who can represent clients before the European Patent Office.
These consultants all have double engineering degrees, in mechanical engineering or biology for example, and are sometimes even PhDs in their technical field. They have also followed a legal curriculum and passed competitive exams to become CPI and Mandataires Européens.
They are the guarantors of a text that clearly explains the invention, drafted according to the legal rules imposed by the Offices, both in terms of formatting and content. The attorneys will also be able to determine whether or not there is indeed an interest in extending the patent application internationally, depending on the robustness of the invention.
Consequently, if there’s one deadline not to be missed in the life of your patent, it’s the 12-month international extension.
If you let this 12-month period pass without proceeding with an international extension, you may have a patent application granted in France, and therefore a monopoly only on French territory, but you will no longer be able to claim protection for your innovation abroad.
Be accompanied by professionals for your industrial property strategy.
