What to Do if COVID-19 Has Affected Your Patent Application

The patent application pathway is laden with deadlines that you must meet to eventually have your patent granted. If COVID-19 has affected your ability to meet your patent deadlines, it is crucial that you understand your options, so your hard work does not go to waste. This article outlines what you should do if COVID-19 has impacted your patent application plans.

Patent Pathway

The patent pathway for an invention is a multi-stage process that generally follows where you:

1. file an Australian provisional application by its due date (date X);
2. convert to a patent cooperation treaty (PCT) application 12 months after date X; and
3. file patent applications in the desired countries 30 or 31 months from date X.

Your invention will be compared with ‘prior art’. Prior art is any publicly available information that relates to the field of your invention. It can be anything from: 

• patent documents;
• journal articles;
• trade magazines; or
• websites anywhere in the world.

It will be compared to see how novel and inventive your invention is in accordance with the patent law. Date X is the priority date for your invention and is important because it is the date that “prior art” starts being excluded from consideration with respect to how unique your invention is.

Missing any of the above deadlines can result in you losing your priority date. This can be devastating to your chances of getting a granted patent. Moreover, in normal circumstances, trying to reinstate a patent application after missing one of these deadlines often requires you needing to pay significant penalty fees. You will also need to make submissions on what exceptional circumstances led to you missing the deadline.

However, each stage requires additional funds. Therefore, if you cannot afford to advance to the next stage due to the impact of COVID-19, you will need to consider your options at each stage of the application process.

Stage One

Refile Your Provisional Application

If you have yet to disclose or commercialise your invention, you may want to just refile the provisional application and restart the 12-month clock. This will keep your options for international or national filings open down the track if that is something you wish to do.

Seek an Extension for Filing the PCT Application

If you still want to push forward with the PCT application, there are ways you can seek an extension for filing this application. You should still ensure that you request this extension no later than two months after the second deadline.

The World Intellectual Property Organisation (WIPO) has advised that they will be taking a lenient approach to PCT deadlines. They have also urged other relevant authorities to do likewise.

Stage Two

Withdraw Your Earliest Priority Date

You have the option of withdrawing the earliest priority date for the PCT application to extend the 30-month and 31-month deadlines. Essentially, you can withdraw the provisional application, and the earliest priority date becomes the filing date of the PCT application. Thus, the deadlines for entering the third phase are recalculated and effectively extended for 12 months.

Withdrawing your priority date should be a last resort. This is because doing so allows other inventions that may have been created during this time frame to be raised as ‘prior art’. This means that it will have priority over your patent.

However, if it means salvaging your application, then it may be worth the risk. Please note that you would have to withdraw the priority document before the original deadline for filing the PCT application.

Stage Three

Seeking Extensions for Filing in Other Countries

Many patent offices are implementing generous provisions for extensions during COVID-19. Some of these are being applied to the deadlines for the third stage of your patent process. As such, depending on the countries of interest, you may be able to delay this stage without the need for making submissions or paying fees. It is important to check these details and confer with a patent attorney before relying on any assumed extension.

Key Takeaways

If your ability to file your patent application has been impacted by COVID-19, you may need to reconsider your options. These options could include:

• refiling your application;
• seeking an extension of time; or
• withdrawing your application.

Each of these options have different processes, so it is crucial that you obtain legal advice before making any decisions.