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I've got a client with some PCT applications who decided not to enter into national phases when it was timely, and now is having second thoughts. Two questions arise:

  1. If the 30-month national phase deadline has passed is there any way to continue with this application?

  2. In one such case there are actually two priorities listed, the latter of which is still before the 30-month deadline - would it be possible to drop priority to the earlier one and file a national phase based only on the latter priority?

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    It is risky to advise a client on a topic outside your expertise and training.
    – George White ♦
    Jan 19 at 22:29
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    @GeorgeWhite's comment can not be emphasized too much. Dispensing legal advice without a license to do so is extremely risky. Were I in your shoes (and I have been) my only advice would be for the client to consult with their patent attorney. If they don't have one, I would advise them to hire one.
    – Eric S ♦
    Jan 20 at 18:01
  • "drop priority" - Does it mean not claiming the priority? Or a withdrawal of the priority application?
    – picibucor
    Jan 21 at 13:48
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    It means removing a previously made claim of priority to an earlier filing.
    – George White ♦
    Jan 27 at 1:48

1 Answer 1

Reset to default
2

Extend past 30 months

Each country/regional office has its own deadline and exceptions. For example, the EPO is 31 and 32 is ok in China with additional payments month deadline and it looks like it can be 42 months in Singapore with extra payments.

Drop priority

I replaced this part of my answer with the content of a comment by The Europeanist

Case 2 of OP says that one of the priorities is not 30 months old yet, and whether dropping the first priority could extend the 30-months deadline for national/regional entry. But the 30-months deadline for entries has already expired when counted from the effective date, thus dropping the first priority (if possible at all, which I believe it is not possible either) will not trigger recalculation of the 30-months deadline.

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  • I believe dropping the priority claims will not work. Time limits are recomputed when they have not already expired by the time the priority is withdrawn. R. 90bis.3(d) PCT: "Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not already expired shall, subject to paragraph (e), be computed from the priority date resulting from that change." In my view there is no way to address OP's problem.
    – the Europeist
    Jan 23 at 19:09
  • @theEuropeist Thanks - after I understand this I will edit my answer. And feel free to post your own answer. How does "as not already expired" fit into the OP's situation? The 30/31 month deadlines have expired.
    – George White ♦
    Jan 23 at 21:40
  • Case 2 of OP says that one of the priorities is not 30 months old yet, and whether dropping the first priority could extend the 30-months deadline for national/regional entry. But the 30-months deadline for entries has already expired when counted from the effective date, thus dropping the first priority (if possible at all, which I believe it is not possible either) will not trigger recalculation of the 30-months deadline.
    – the Europeist
    Jan 24 at 17:33

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