What to do if You Miss a Deadline. Episode 91

The Importance of Deadlines in Patent Law

I’ve heard that the most common reason patent attorneys get sued for malpractice is missing a deadline. Missing a deadline can be critical, or sometimes not so critical. Although I’ve likely discussed various deadlines and how to handle them in previous episodes, I wanted to create a single episode summarizing the main deadlines you might miss and how to handle them—if they can be handled at all.

I can’t cover every possible deadline, so these are just some of the main ones. If I mention a part of the patent process but don’t go into detail about what it is, that’s because I’ve already covered it in a previous episode.

I’ll be going through these deadlines quickly. While there are some exceptions, I’ll focus on the general rule, the deadline, and what you might be able to do if you miss it.

The One-Year U.S. Filing Deadline

The first critical deadline to be aware of is the one-year U.S. deadline to file some type of patent application.

If you publicly disclose your invention—whether by sale, use, or discussing it with others without a non-disclosure agreement (NDA)—you have only one year to file a patent application. This application can be:

• A provisional application,

• A non-provisional application, or

• A PCT (Patent Cooperation Treaty) application.

What Happens If You Miss This Deadline?

If you miss this deadline, there’s not much you can do.

The examiner won’t necessarily know that you missed the deadline, so you might still get a patent. However, if your patent is ever challenged in litigation, it can be found invalid.

This one-year deadline applies in the U.S., but not every country has this grace period. If you’re filing in other countries, make sure you understand their deadline rules. If you miss this deadline, there’s no fee you can pay to fix it. Your only option may be to argue that your disclosure didn’t actually trigger the one-year rule.

The Provisional to Non-Provisional Deadline

This is also a 12-month rule. If you file a provisional application, you have 12 months to file a non-provisional application or a PCT application.

If that 12-month deadline falls on a national holiday or weekend, you have until the next business day to file.

What Happens If You Miss This Deadline?

Technically, you do have an extra two months to file a petition to restore priority, but:

• This costs money.

• You must prove that the delay was unintentional.

For example, if you told your patent attorney not to file a non-provisional and later changed your mind within two months, you cannot use that two-month extension.

The petition fee is currently between $500 and $2,000, depending on your entity size.

Special Consideration for PCT Applications

This two-month extension might apply to PCT applications, but not all countries allow it.

For example, in the U.S., you might be able to file a PCT application two months after the normal 12-month deadline and still obtain a U.S. patent, but other countries may reject it. So, don’t take chances with this deadline.

If you completely miss the deadline, your only option is to file a brand-new application without claiming priority to the original provisional. However, if you publicly disclosed your invention, that disclosure could be used against you.

Rejection Response Deadlines

If you receive a rejection from the USPTO, you will almost always have a three-month deadline to respond.

You can extend this deadline for up to three more months by paying an increasing late fee for each additional month:

• 3rd to 4th month → Late fee

• 4th to 5th month → Higher late fee

• 5th to 6th month → Even higher late fee

If the deadline falls on a holiday or weekend, you can file on the next business day.

What Happens If You Miss the Six-Month Deadline?

Your application becomes abandoned.

At this point, you’ll need to revive your patent application.

Previously, different rules applied depending on whether your abandonment was unintentional or unavoidable, but now you only need to state that it was unintentional.

However, it’s still best to file as quickly as possible.

To revive your application, you must:

• File a petition to revive an unintentionally abandoned application.

• Pay a revival fee (currently between $500 and $2,000, depending on entity size).

The Issue Fee Deadline

Once your patent is allowed, you must pay the issue fee within three months. There is no extension for this deadline.

What Happens If You Miss This Deadline?

If you miss this deadline, you cannot claim that it was unintentional. This is one of the worst deadlines to miss because you lose your patent after spending time and money getting it allowed. [THIS IS INCORRECT INFORMATION IN THE PODCAST EPISODE. YOU CAN PETITION TO REVIVE BASED ON UNINTENTIONAL ABANDONMENT AND PAY THE PETITION FEE, A STATEMENT THAT IT WAS UNINTENTIONAL, AND THE ISSUE FEE]

Is There Any Way to Fix It?

If you have other pending patent applications claiming priority to the abandoned application, you might be able to file a new application, get it examined again, and receive the original effective filing date. However, if you don’t have a related pending application, there’s nothing you can do. [THIS IS INCORRECT INFORMATION IN THE PODCAST EPISODE. YOU CAN PETITION TO REVIVE BASED ON UNINTENTIONAL ABANDONMENT AND PAY THE PETITION FEE, A STATEMENT THAT IT WAS UNINTENTIONAL, AND THE ISSUE FEE]

Filing Continuing Applications

If you want to file a continuation, continuation-in-part (CIP), or divisional application, you must do so before your patent issues.

Even though the rules state that you must file a continuing application before issuance, the Federal Circuit has ruled that filing on the same day your patent issues is acceptable.

However, don’t risk waiting until the last minute.

Best Practice

When submitting your issue fee, file any continuing applications on the same day to ensure you don’t miss the deadline.

If you do miss it, you might be able to file a reissue application, but this is difficult and requires proving that your issued patent should have been broader.

Maintenance Fee Deadlines

Maintenance fees are due at:

• 3.5 years

• 7.5 years

• 11.5 years

You can pay up to six months before the due date.

If you miss the initial deadline, you have another six months to pay with a late fee (currently $40–$160, depending on entity size).

What Happens If You Miss This Deadline?

If you completely miss the extended deadline, your patent goes abandoned.

You can still revive it by filing a petition to revive an abandoned patent, but this costs between $500 and $2,000, depending on your entity size.

Final Thoughts

There are many other deadlines I haven’t covered, such as PCT deadlines and fixing priority claims.

If you miss a deadline, I strongly recommend consulting a patent attorney instead of trying to fix it yourself.

I’m Adam Diament. Until next time, keep on inventing!