Are you considering filing a patent application under the Paris Convention or 35 USC 119? If so, you may be wondering if it’s possible to file a late US National Stage Entry while claiming priority to your foreign priority application. The answer is yes, but there are certain criteria and procedures that must be followed in order for this to happen. In this article, we’ll discuss what those criteria and procedures are, as well as how they can help ensure that your international patent application is successful.
1. Overview of the US National Stage Entry Process
The US National Stage Entry process is a necessary step for applicants who wish to obtain foreign priority for their invention. This process involves filing a national stage application with the United States Patent and Trademark Office (USPTO) that claims priority to a previously filed foreign or international patent application. In order to be eligible for this type of entry, you must have filed your prior foreign or international application within the 12-month priority period from your US filing date for a utility patent or 6 months priority period for a design patent. However, if you miss that date in the US, is there a remedy?
2. What is the Paris Convention and what are its benefits
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on 20 March 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property. The convention is currently still in force. The substantive provisions of the Convention fall into three main categories: national treatment, priority right and common rules.
3. How to file a Late US National Stage Entry of Paris Convention Application
If you would like to file a Late US National Stage Entry of Paris Convention Application, there are certain criteria and procedures that must be followed. First, you will need to submit a petition fee. In the US, the Director has prescribed regulations, including the requirement for payment of the fee specified in 37 CFR section 41(a)(7) , pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.
Once all of these criteria have been met, you may file an original or subsequent application for a patent in the US. It is also important to note that if you have previously submitted a delayed priority claim, this must be indicated on a separate cover sheet and identified in the claims of your subsequent application.
Finally, it is important to remember that filing a late US National Stage Entry of Paris Convention Application may result in extended delays, as it requires additional procedures for the Intellectual Property Office to obtain all relevant priority documents.
By following these criteria and procedures, you can ensure that your late US National Stage Entry of Paris Convention application is successful and that your invention receives the protection it deserves.
4. Advantages and Disadvantages of filing a Late US National Stage Entry of Paris Convention Application
Filing a Late US National Stage Entry of Paris Convention Application can offer several advantages, such as decreased filing fees and streamlined procedures for obtaining international patent protection. Additionally, it may result in a quicker turnaround time overall. However, there are some drawbacks to this process as well. It requires additional paperwork and documentation that must be provided to the Intellectual Property Office and it can result in extended delays. Additionally, there is a risk that your application may not be successful if all criteria are not met.
For more information, please contact Arlen Olsen at Schmeiser, Olsen & Watts LLP at aolsen@iplawusa.com.
