If your company has filed a U.S. patent application (provisional or nonprovisional) and might ever sell, license, or manufacture abroad, this checklist is for you. Most foreign patent rights are won or lost within 12 months of your first filing.
What is the most important foreign filing deadline?
12 months from your first filing. Under the Paris Convention (Article 4), you can claim your U.S. filing date in other countries only if you file there, or file a PCT application, within 12 months (6 months for design applications, Paris Convention Art. 4C(1)).
The checklist
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01
Docket the 12-month priority date the day you file. A provisional application starts this clock too, and it never pauses.
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02
Confirm a foreign filing license before sending anything abroad. For inventions made in the U.S., 35 U.S.C. 184 and 37 CFR 5.11 require a license (usually granted on the filing receipt) or a 6-month wait; violations can invalidate the U.S. patent (35 U.S.C. 185).
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03
Don't rely on the U.S. grace period overseas. The U.S. one-year grace period for your own disclosures (35 U.S.C. 102(b)(1)) is not available in most countries, including Europe and China, so file before you publish, present publicly, offer for sale, or sell.
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04
Decide PCT vs. direct national filings by month 10. A PCT application buys time (generally to 30 months, or 31 months in some jurisdictions) and one search report; direct filings can be less expensive if you need only one or two countries.
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05
Make sure the priority filing fully supports your claims. Priority covers only what the earlier application actually discloses; new examples or formulations added later get the later filing date.
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06
Check ownership and applicant names. Many countries require the applicant to own the priority right when the foreign application is filed, so get assignments signed early.
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07
Track the PCT search report and Chapter II option. A demand for international preliminary examination is due by the later of 22 months from priority or 3 months after the search report is sent (PCT Rule 54bis.1).
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08
Docket 30 months for national phase entry. U.S. entry is due 30 months from priority (35 U.S.C. 371; 37 CFR 1.495); the European Patent Office allows 31 months (EPC Rule 159(1)). Confirm the deadline for every target country.
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09
Budget for national phase costs early. Translations, local counsel, and filing fees in each country come due together at 30/31 months and are often the largest single patent expense.
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10
Know the rescue options, but don't plan on them. A missed 12-month date can sometimes be restored within 2 months (PCT Rule 26bis.3; 37 CFR 1.55(c) in the U.S.), but standards vary and some offices require "due care."
Common mistakes
- Publishing a paper or showing customers or investors before filing, then discovering foreign rights are gone.
- Filing a thin provisional "to hold the date" that doesn't fully describe and support the claims you later need abroad.
- Missing the 30-month date because no one owned the national phase decision.
Questions & Answers
Q: How long do I have to file foreign patent applications after my U.S. filing?
A: Generally, 12 months from your first filing (6 months for design applications). Within that window you can file directly in each country or file one PCT international application and still claim your original U.S. filing date (Paris Convention, Art. 4).
Q: Does a U.S. provisional application start the 12-month clock?
A: Yes. A provisional application is a first filing for priority purposes, so the 12-month deadline for both the U.S. nonprovisional and foreign or PCT filings runs from the provisional's filing date.
Q: Is a PCT application an "international patent"?
A: No. There is no international patent. A PCT application is a single filing that preserves your right to seek patents in more than 150 member countries and gives you an international search report, but each country still decides whether to grant a patent at the national phase.
Q: When must a PCT application enter the national phase?
A: In the United States, by 30 months from the earliest priority date (35 U.S.C. 371; 37 CFR 1.495). Many countries use 30 months; the European Patent Office allows 31 months. Deadlines vary, so check each target country.
Q: Do I need U.S. government permission to file abroad?
A: For inventions made in the United States, yes. You need a foreign filing license, which is usually granted on the USPTO filing receipt, or you must wait 6 months after U.S. filing (35 U.S.C. 184; 37 CFR 5.11). Filing abroad without one can make the U.S. patent invalid (35 U.S.C. 185).
Q: What happens if I miss the 12-month priority deadline?
A: You may be able to restore priority if you act within 2 months after the deadline and the delay qualifies (PCT Rule 26bis.3; 37 CFR 1.55(c) in the U.S.). Standards differ by country, and some offices require proof of "due care," so treat restoration as a last resort.
Need help?
Our patent attorneys in Chicago and Austin manage U.S. and international filing strategies. Need help? Contact Green, Griffith & Associates.