Filing a foreign patent without claiming priority

If you have missed the deadline for filing the PCT then you have already lost the 12M grace period from the priority date (basic application)

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1)       If the basic application is not published, can we file in a foreign country directly?

Since you already missed the 12M window period you cannot file in foreign country irrespective of the fact that your basic application is published or not.

2)       If the application is published, using a grace period of 1 year from the public disclosure can we file a foreign patent?

12M grace period is from the priority data but not from the date of publication.

Is it something else you are trying to ask? Your questions are a bit unclear.

your basic application was provisional or non-provisional?

Thanks for the reply. Iam searching for the alternate procedures  "If PCT is not filed within prescribed time limit after a complete specification"

1) We cannot file a conevntion application.

2) We cannot file in another country without claiming priority of the basic application because it will be treated as a prior art.

3) If the basic application is not published, we can withdraw that application and refile the same.

In case if the prescribed time limit of 15 months for withdrawing that application expires will they consider the request? 

3^rd option works provided you have withdrawn your application before 15M deadline. I don’t think you will have any chance once this deadline expires. Timing is of essence in IP matters. One needs to be careful and keep a track of all the deadlines.

Dear Navya,

As I understand, a complete specification was filed and the 12 month deadline for filing convention or PCT application was missed. 

In such a situation you are left with very limited options, such as withdrawal of application before publication and filing a fresh application thereafter, which have already been discussed. As you are already aware, if this option is exercised, any publication disclosing the invention during the in-between period would act as prior art.

There is however one option available that of restoration of priority in case of filing of a PCT application. Although the Indian Patent Office does not provide this opportunity to the applicant, the International Bureau does. As you may be aware, an Indian applicant my file a PCT application either at the Indian Patent Office as the receiving office or directly at the International Bureau. The opportunity to restore priority on a PCT application is available for two months after the 12 month time period requires.

A statement providing the reasons for delay in filing the PCT application is also required to be submitted within these two months. International Bureau may also require evidence corroborating your statement of reason for delay.

Hope the above proves useful.

Regards,

Abhinav Bhalla

Advocate

Registered Patent Agent

+91-9910406711

abhinav.bhalla@kclalumni.net

Thank you

Thanks Abhinav for this useful information.

Navya, the following link provides list of patent offices which allow/not allow for restoration of the right of priority. I hope this will be useful.

https://www.wipo.int/pct/en/texts/restoration.html

Thank U !

In this case can we file a patent of addition for the withdrawn application with additional stability data which is not disclosed in the main application.

Can we file a PCT application for a divisional or patent of addition?

Hi Navya,

In your present case, is 15months are completed???

Yes