Revival of a PCT Application

Gila Monster, Brown’s Ranch, Scottsdale

The Patent Office is relatively generous when it comes to tolerating accidents in patent applications and patents. Revival of a PCT application is more difficult.  Patent applications can sometimes go abandoned when an applicant fails to submit a reply or response in time, or fails to pay the full amount of a fee that is due, or leaves out critical elements of an application. I recently inherited a client with a patent portfolio that had all of these problems, and fortunately, they can be solved in most circumstances. The Patent Office allows revival of an application with the filing of a petition explaining the lapse and delay, and payment of a hefty petition fee.

An owner can also “revive” a patent.  Utility patents have maintenance fees that must be paid periodically to keep the patent alive. If any of those payments are missed, the patent will expire. However, the Patent Office has a mechanism to accept the unintentionally delayed payment of a maintenance fee. Again, this requires a large surcharge.  I have had to do a few of these, all because an attorney passed away without a contingency plan for transferring or alerting his clients.

A PCT international application, however, is a different animal. PCT applications proceed along a strict and time-sensitive path. PCT applications must be filed within 12 months of a first priority date to initiate an “international phase” of the process, in which the PCT application is centrally searched, examined, and potentially amended. Then, the applicant must enter the “national phase” of the process within 30 or 31 months (depending on the country) of the priority date by filing national phase applications in foreign countries. If the applicant doesn’t file foreign-country applications by the 30/31 month deadline, the PCT application simply expires.

“PCT” stands for Patent Cooperation Treaty. More than 150 contracting states have signed the PCT. This treaty establishes a centralized process for searching and examining applications, internationally-accepted indications of patentability, and processes for filing local patent applications based off the PCT application. Another tenet of the PCT is that the international application has the effect of a national patent application in all contracting states when it is filed. In other words, filing a PCT application is considered to be effectively filing an application in each of the 150 contracting states’ patent offices.

This yields a helpful consequence in the US, with its generous abandonment and revival rules. The US revival rules are not limited to applications that are actually filed with the Patent Office; it applies to any application that is effectively filed. This means that, if an applicant files a PCT application and forgets to enter the US as a national phase application by the 30-monthe deadline, then you can actually revive the application as to the US.

This is not revival of a PCT application itself. There is no mechanism to do that. However, revival of a PCT application as to the US will allow you to file into the US and maintain the PCT’s priority date. Your ability to revive the application in other countries will be similarly determined by local law there. Reviving a PCT application in a national phase country is not simple. Check with foreign counsel or your local patent attorney and discuss the reasons the PCT application was abandoned to see if revival is even an option.