Figuring out PCT patent filing deadlines isn’t always straightforward. There are two issues at play when you reference “deadlines.” One deadline can be a priority deadline. You need to meet this deadline so that your next filing receives the filing date of a previously filed application (i.e., the priority date). The Paris Convention (which guides portions of the PCT) has a 12-month priority deadline. That goes for U.S., Paris Convention Members and 153 PCT Member States.
For the purposes of foreign filing, a provisional application and non-provisional receive the same treatment. In other words, that 12-month clock to file a PCT application starts ticking from the earliest filing date. If you file the following sequence of patent applications:
Article 4.C(4) of the Paris Convention dictates that the 12-month window for filing a PCT application commences on the filing date of the earliest application in the family. Accordingly, in the above scenario, if the PCT is filed on or before January 1, 2001, it will be entitled to the priority date of the provisional filing. However, if the PCT is filed after January 1, 2001, the PCT cannot claim priority to either the provisional or the non-provisional application. Without the priority claim, the novelty of the subject matter disclosed in the PCT would be negated by the non-provisional application (unless the non-provisional is abandoned prior to publication).
The second issue of PCT patent deadlines is that of statutory bars resulting from publication. In the university environment, inventors have a strong incentive to publicly share their research at an earliest date possible. So, let’s add to the scenario above:
In the above-mentioned scenario you lost your provisional priority date for the PCT. Foreign countries have an absolute novelty requirement meaning there a public disclosure before the filing date can negate possible patent rights in the disclosed invention. Consequently, since the PCT couldn’t use the provisional filing date (outside 12-months), it had to use the non-provisional filing date which was AFTER the disclosure.
The same logic applies to the filing of a patent application. To avoid a $10,000.00 legal fee for preparation of a mechanical patent application, for example, a client may propose that we waive the fee and participate in the profits derived from the invention. If the invention meets with commercial success, the client could pay a fee far in excess of $10,000.00.
If the invention is not commercially successful, we have worked for two to three weeks with no revenue. This is even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success. That depends upon the marketing efforts made by the inventor, not upon the quality of the patent application. Consumers don’t purchase products because the patent application for the product is well-written. Being full-time patent attorneys, we can do no more than advise our clients to avoid marketing scams.
A different reasoning applies to lawsuits. Contingency fee arrangements are common in personal injury (PI) cases because the only issue in such cases is damages. The liability is usually clear and most PI law firms will not accept a case on a contingent fee basis if liability is not clear. Thus, the only issue in most PI cases is how large the payment will be, not whether or not there will be a payment.
In intellectual property cases, liability is always disputed. An accused infringer will attack the validity of the patent by citing prior art that was not cited by the examiner, and will argue noninfringement as a backup defense. A typical patent infringement suit lasts two or three years and requires the full-time attention of at least one lawyer. No lawyer with an office can stay in business without revenue for such a long period of time. Personal injury cases, on the other hand, are over much quicker and, again, the only issue is the size of the recovery.
In most cases, we are able to quote a flat fee for our services. This removes the uncertainty caused by hourly rates. When a lawyer quotes a fee of $300 to $500 per hour to write a letter or to prepare a patent application, the inventor’s reply is always “Write fast.” Well, that leads to a letter or patent application prepared in a bum’s rush. A well-crafted letter, patent application, or an amendment to a patent application, is best prepared in a focused, well thought out manner. A flat fee protects the client from surprises, ensures a thorough preparation of the application, and is, we believe, the only fair alternative to hourly rates and contingency fees.
