Glenshaw, PA asked in Patents (Intellectual Property) for New York

Q: Loophole to extend US provisional patient by 18-month by filing PCT and preserve original US priority date

I have filed a provisional US patent 11+ months ago (I have about a week remaining to file full patent). I know in the US there is no way to extend this without loosing my priority date of May 2020. However, can I refile this as a PCT, claiming the May2020 priority date, and then file the full patent in the US within the next 18-month and still have the May 2020 priority date in the US? Is this a valid loophole, which I can do if I pay ~$4000 fees for filing internationally?

2 Lawyer Answers
Bill Hulsey
Bill Hulsey PRO label

A: This works, if international filing is important. However, there are better alternatives.

Liliana Di Nola-Baron
Liliana Di Nola-Baron
  • Patents Lawyer
  • Washington, DC
  • Licensed in New York

A: If the PCT is just a loophole and it has no value to you, a less expensive alternative would be to file a non-provisional application claiming priority to the provisional, optionally with a request for non-publication, and then abandon the non-provisional application at a later time in favor of a continuation or continuation-in-part application.

Liliana Di Nola-Baron, J.D., Ph.D.

Attorney at Law

Di Nola IP


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