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If the 12 month window for PCT application is missed and the patent has no new material since priority date, is there no way to apply for foreign patents?

I misunderstood the timing guidelines and thought I had more time for this. Provisional filed April 2017, nonprovisional filed July 2017 and issued July 2018. So now it's too late to follow the PCT process, as I now understand. Is that correct?

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It's correct that you cannot file a PCT application based on your US application anymore. However, reading for example art. 54 of the European Patent Convention

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

(emphasis added)

IF there are no publications of your invention till today and your US application hasn't published early, there is, as far as I know, nothing impeding you from filing a European patent application and your US application will not be prior art.

However, I'm not sure when your non. provisional will be / has been published because it issued. Might be soon?

Another thing, european patent applications require a patent attorney for foreign applicants for basically every action apart from filing, so you'll need an attorney anyways and might as well ask them then.

  • Thanks, that is helpful. My patent has not published, and according to what the USPTO tells me, it won't publish until 2019. It has not been publicly disclosed in any other way. I am particularly interested to know if Asian patent offices follow a similar guideline as what you described for Europe. I understand that, if I'm serious enough about it to act on it now, I would probably need to hire an attorney specializing in foreign patenting – and all such questions would be answered. But for planning purposes it is good to know now about what foreign patenting options could be possible. – Charles Jul 31 '18 at 14:22
  • If it has issued in the US in July 2018, by definition, it has been published as a granted patent even though the publication of the application may not yet have happened. – George White Jul 31 '18 at 22:53
  • @GeorgeWhite by which mechanism? – DonQuiKong Aug 1 '18 at 4:13
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A useful resource for grace periods. Of course, you will need a local attorney for each country to figure out if you fit the requirements.

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