Maximizing patent term (was “certified copy needed?”)

A member of the EFS-Web listserv, an email discussion group for patent practitioners, posed this question:

We filed a US continuation application claiming priority to a PCT application filed in the EP receiving office.  (The PCT application had no priority claim.)  We filed the application by the 12-month convention deadline at the client’s request.

I do not think we need to provide a certified copy of the PCT, but can anyone confirm?

The question as presented turns out to be easy to answer — no, if you don’t want to provide a certified copy, you could avoid having to do so.  But it would be at the cost of a year of patent term.  The real question is “how may I avoid flushing a year of patent term down the drain?”

First we fill in a few arbitrary dates for sake of discussion.

We assume that the filer filed a PCT application a year and three months ago.  (Like all PCT applications these days, it designated all possible States.)  We assume that three months ago the filer filed a regular (35 USC § 111(a)) domestic patent application in the USPTO.  The filer wants the US case to have the benefit of the filing date of the earlier case for the purposes of denying some prior art to the USPTO Examiner in the examination of the second case.

And apparently in the Application Data Sheet for the second case, the filer listed a 35 USC § 120 relationship back to the first case.  We understand that the ADS characterized the § 120 relationship as a “continuation”.

The filer did not say how much patent term is desired for the US patent.

Does the filer want the patent term to expire twenty years from three months ago (twenty years from the second filing date)?  If so, then the filer needed to have said that the second case was claiming priority under 35 USC § 119(a-d) from one of the non-US designations of the first case (and needed to have avoided claiming domestic benefit under 35 USC § 120), and yes the filer would have needed to provide a certified copy.

But if the filer does not mind flushing a year of patent term down the drain, then the filer can stick with the filer’s existing § 120 benefit claim and then there is no need to provide a certified copy.  The US patent will expire twenty years after the PCT filing date.

(Note that it absolutely does not matter for this analysis which RO (Receiving Office) the filer chose.  These questions would all get answered the same if the filer had selected RO/US or RO/IB instead of RO/EP for the filing of the PCT application.)

Note too that if the filer doesn’t mind throwing away a year of patent term, then instead of filing a new continuation application the filer could just as well (probably better) have simply entered the US national phase.  This would have offered the benefit of the unity-of-invention restriction standard rather than the distinct-invention restriction standard.

But what’s done is done.  The domestic US application has already been filed, and the filer did not present a 35 USC § 119(a-d) priority claim.  The filer presented a 35 USC § 120 domestic benefit claim.  Suppose that after taking into account the prospect of flushing a year of patent term down the drain, the filer now decides to try to recover that lost year of patent term.  Is it possible now, three months after the fact?

The answer is “yes”, so long as the filer does not wait too long.  The filer has one month within which to straighten things out without having to pay any government fees or file any petitions.  (The cleanup needs to be done within four months of the US filing date, or within sixteen months of the PCT filing date, whichever is sooner, which either way is one month from now.)  The cleanup is done by handing in an additional Application Data Sheet using strikethroughs and underscores to show the cancelation of the domestic benefit claim and the addition of the priority claim.

The certified copy itself also needs to be handed in within the next month.

Many certified-copy tasks can nowadays be accomplished by means of either PDX or DAS.  In particular EPO and USPTO both belong to the PDX system and normally this would provide for an easy and simple electronic transfer of a certified copy of the priority document from EPO to USPTO.  But unfortunately, EPO’s electronic interface with PDX lacks the ability to provide a certified copy of a PCT application that had been filed in RO/EP.  (RO/IB and RO/FI are each sophisticated enough that their electronic interface is able to provide a certified copy of a PCT application to PDX.  But the other members of PDX, including RO/EP, RO/US, RO/ES, RO/GB, RO/AU, RO/DK, and RO/SE, are not that sophisticated.)  So in this particular case the filer will need to obtain a physical certified copy of the PCT application from EPO and will need to physically deliver the certified copy to USPTO.  (All within the next month.)

5 Replies to “Maximizing patent term (was “certified copy needed?”)”

  1. “the second case [claims] priority under 35 USC § 119(a-d) from one of the non-US designations of the first case”

    How does one go about claiming 119 priority from one of the other countries? Do you simply list the country (e.g., CA) and use the PCT application number as the number?

    1. Yes, that’s right. You could pick any of the 147 countries that belong to the PCT that are not the US, and then list the PCT application number and filing date. There is no reason why it would have to be same as the office that served as Receiving Office. So in this case the Receiving Office was EP but in the US ADS you could (to use your example) list “CA” as the country of the priority filing. Again note that it absolutely does not matter which RO the filer had selected. This trick for extending the US patent term by a year works just fine even if the RO selected by the filer had been RO/US.

  2. Thanks for sharing this, Carl. It is worth noting that this trick is partly made possible by the changes to 102 under the AIA. As many practitioners will recall, the pre-AIA version of 102 did not treat a priority claim under 119(a-d) as the effective filing date of the application for 102(b) purposes (this has been remedied by the AIA). Thus, I think many longtime practitioners may have a tendency to reflexively revert to filing a section 120 continuation, while ignoring the opportunity to save one year of patent term.

  3. Dear Carl —

    Do I understand correctly? I think this only works if —
    — the U.S. application is filed within one year of the oldest priority date (Paris Convention definition of “oldest” priority), and
    — there’s no U.S. nonprovisional in the chain back to that oldest date, only provisionals, PCT applications, and foreign applications?

    That is, it works if all claims are Paris convention or § 119, none arise under U.S. § 120. Right?

    Is that understanding correct? Thank you.


    1. Right. And yes, this means that in the year 2021, there are real-life situations where the practitioner absolutely needs to not snooze through the fact that “priority” and “domestic benefit” are not the same thing.

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