After 4 years prosecution, our USPTO application was allowed. We filed with a nonpublication request.Our patent was not published yet.
At the time of filing we had no intentions of applying for international patents but now we would like to apply for international protection.
Is it too late? Can we still rescind the nonpublishing request? Can we still apply for PCT?
Our patent agent is not versed on this.
Note - the patent has not issued but we did discuss it in public one month ago.
Yes one can easily rescind a non publication election but due to your public discussion you will have a problem successfully filing anywhere else.
Congratulations on the allowance! In general, non-publication election can be rescinded at any time. However, there is a strict requirement to file the recision within 45 days after a foreign filing. Of course doing do before any foreign filing is preferable. See MPEP 1123 Rescission of a Nonpublication Request
(ii) An applicant may rescind a request made under clause (i) at any time. (iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned.
In your question you mention your “patent”. Your most recent comment confirms that it is not yet an issued patent. That is good. You can immediately file a PCT and quickly file to rescind the non publication request.
You public discussion breaks novelty and most everywhere in the world requires absolute novelty at the time of filing. Under the Paris Convention a filing in some place can cover that requirement in all other convention locations but that only lasts a year. At year four it is way too late.
The hope is that your discussion was not detailed enough to bar all claims you might like to get. There may be a way to get a narrower claim set issued in places you care about.
It is entirely based on the specific disclosure you made.
If there is some obscure place that has a grace period and doesn’t require absolute novelty it’s not likely to be anywhere where protection is helpful.
