What Founders Should Know About Patent Term, National Phase Deadlines, and Missed Filings
Introduction : The common founder misconception – getting a patent granted means you are “locked in” for 20 years, full stop. It becomes evidently believable as it is also mentioned in Section – 53, The Patents Act, 1970, and Article – 33 of TRIPS.
Now what most founders wrongly interpret is that after filing an application for a patent grant, they get excited thinking they have two decades of patent protection. What they miss to calculate is the time it takes for all the procedural requirements to end and all the checkpoints to pass. When filing for the grant internationally, there is a Paris Convention Priority Deadline of 12 months; it applies when filing in any member country (Article 4, Paris Convention). Now if the applicant, busy in enjoying the assumed patent grant, forgets this deadline the priority claim is lost, not “delayed”, over. The application is treated as withdrawn.
Once all the pre-grant procedural requirements are met and the office officially grants the patent do you actually enter the 20 years term. Now as per the provisions the 20 years term starts from the date of the filing of the application, but the rights cannot be enforced until the grant is actually issued by the office.
One of the biggest misconceptions that the founders have is that during due diligence or while consultation with their lawyer, they hear “20 years of patent protection” and treat the procedural deadlines, which can stretch upto 30 months (PCT national phase deadline), as a soft internal target rather than a hard deadline. This results in losing rights in a country exactly when it matters the most, like during fundraising or diligence.
This blog talks about the difference between patent term and filing deadlines in a simple founder-friendly way. It covers the importance of the 12-month priority deadline and the national phase deadlines under PCT practice, while underlining the consequences of missed deadlines and importance of reminders and docketing systems.
Patent Term V. Filing Deadlines: Why they are not the same clocks
Patent term is the total duration of the exclusive rights’ validity. Duration starts strictly from the date of filing the application. Article – 33 of TRIPS, has set a standard of minimum 20 years of patent protection globally. Section – 53(1), Patents Act, 1970, in India follows the prescribed standard in their domestic law.
When filing an application for the grant, there are certain deadlines at every stage of the procedure, before any exclusive rights exist, to be met otherwise the application is considered withdrawn/abandoned. Compliance with these deadlines determines whether the application survives to grant at all.. They, in no context, contribute to the duration of the patent grant.
The durations of patent term and filing deadlines often get blurred together mentally because both are mentioned in months/years. The patent term is a fixed duration of 20 years which can easily be memorized by any layman, whereas the procedural deadlines are multiple and can easily get intermingled, feel quite bureaucratic, and hence get deprioritized. Let’s assume there is a Startup A, they file an application for the grant and after the successful completion of all the procedural requirements they get the grant after 3 years, during which they could not exercise any exclusive rights, irrespective of the fact that the term began the day they filed an application. On the other hand, a Startup B misses the national phase deadline at month 30 due to which they lose a chance of potential business opportunity in another country, the right to exercise exclusive right on their innovation, irrespective of the fact of what duration was left since the date of filing. The first, the most time-sensitive, and the most confusion generator of these deadlines is the priority filing window.
The 12-month Priority Deadline: Your First Real Clock
When the first application for the patent grant is filed in any country, the filing date becomes your priority date. Now when an application is filed in any Paris Convention member countries, within a time period of 12 months, those later filings shall be treated as if filed on the date when the first application was filed, not the actual filing date. This period of 12 months is the priority filing window mentioned under the Article 4, Paris Convention for the Protection of Industrial Property (Section 44, Patents Act, 1970).
Primary requirement for a patent grant is generally “novelty” (Section 2 (1) (l) and section 25 of the Patents Act, 1970 for prior art/anticipation) which cannot be maintained once the invention is published worldwide. Without priority protection, anything published regarding the innovation between first filing and later foreign filing (a competitor’s patent, one’s own product launch, a conference talk, or a press article) can invalidate the later filings. Although with priority protection claimed, the later foreign filings are treated as if they were filed the same day as the first application, preventing any loss of opportunity caused by disclosures.
For instance, if a founder files first application in India on 1st January, launches the product in the month of June, and wants to file for an application in the USA in the month of march of next year, that is 2 months after the priority filing window. Since the priority window has passed, now the USA filing will be treated as a fresh application and their own product launch becomes their worst enemy turning into public prior art that can be used to reject their own application under novelty/anticipation grounds.
This window of 12 months often feels too short which also is a strict deadline as there are grace periods, and no extension requests are entertained under the Paris Convention. A layman would say, “12 months isn’t that short, it’s technically an entire year”, but only a founder understands how much time is invested in product-building and fundraising. By the time the first application is filed, the international strategies are formed and funds are collected, this priority window reaches its near end. Priority filing buys time to decide where to file, but the next deadline determines how long one can wait before committing to specific countries.
The PCT Route: Buying time with the National Phase Deadline
When filing in a foreign country for a patent grant, the application is to be filed separately in every country. This can be expensive for startups and also the decision must be made within the 12-month priority window regardless of route chosen. Instead of filing separately in every country one wants protection in and bearing the tremendous application cost along with the stressful decision of choosing the country within a few months, a single Patent Cooperation Treaty (PCT) application can be filed. This application becomes an escape from the extra cost and hassle of filing separately in different countries and lets you delay that decision. The Patent Cooperation Treaty, administered by WIPO, usually begins at or near the 12 month priority mark, so it’s the natural next step after the first filing.
When filing under the PCT, the applicant does not receive a “global patent”, nothing like this exists. What they actually get is a sort of reservation that helps keep multiple options open amongst all PCT member countries (over 150) simultaneously, without having to decide which one particular country they actually want yet. During this phase, also known as the international phase, the application undergoes an international search and sometimes a written opinion on patentability. This search is done as a trial to identify relevant prior art and assess patentability before deciding where to pursue protection, it’s not an actual examination for grant. Even if the PCT application acts as a relief, but as said popularly, “all good things must come to end”, and hence this application window also has a deadline of 30/31 months. Before the end of this exhaustion of this window, the applicant needs to inform the preferred country’s patent office of their decision for proceeding with the examination, pay the national fees, and from that point, the examination begins under that country’s domestic patent law. The PCT itself, under Article 22, sets the limit at 30 months from the priority date, not from the PCT application filing date, but from day 1, the day when all things began. Some generous countries, like India, have chosen to extend this window to 31 months under their Patent Rules.
Now a question arises, “What is the difference between priority filing and PCT filing if for both I have to pay individual fees for separate nations?”. The difference is that at month 12, the applicant makes one decision, either file internationally or not. Whereas, at month 30, the number of decisions that can potentially be made are numerous, one for each country they might want protection in, each country having its own government fees, attorney fees, and translation costs since many countries require the application to be translated into their official language for the purpose of public review. This makes it easy for the applicants to sleepwalk past the deadlines as it’s not one clean yes/no decision like the priority deadlines. Founders or even their advisors sometimes make a list of countries to apply in and delay finalising thinking they have ample amount of time in their hands until the 30/31 month mark arrives. Some countries simply never got entered as no final decision was made in time.
What Happens When Deadlines are Missed – and Why Docketing Matters
Based on our learnings up till now, we can figure out the following consequences of missing important deadlines:
Missed Priority Deadline: Loses claim to earlier filing date. Foreign filings, if made at all, shall be treated as fresh applications and are exposed to intervening prior art.
Missed National Phase Deadline: Application is considered withdrawn in that specific country, not paused, and not automatically revivable, just simply over.
Some jurisdictions, including India, allow late national phase entry by extending it by 1 month via petition and surcharge, as per the Patent Rules. Although this exception is more like a lifeline, to be used only in exceptional cases and is not something that founders should rely on as it requires extra cost, causes extra delay, and most importantly is not guaranteed.
Early-stage startups are most likely to fall in such situations as they often do not have in-house IP counsel. They majorly rely on external patent attorneys or informal calendar reminders. Sometimes the cause can be replacement/resignation of a co-founder, or if a law firm engagement lapses. Smallest mishaps like an email reminder going to the spam folder or an inbox that nobody really checks anymore can cause missing deadlines.
This is the reason why formal docketing systems exist. When a dedicated patent law firm is hired, they use specialized docketing software specifically for the reason that relying on individual memory or a temporary calendar reminder which can easily be dismissed or can go unnoticed does not scale and fails silently. For founders, even an ordinary structured system like a dedicated calendar, redundant reminders, or an external counsel or a law firm with expertise and formal docketing responsibility is far more reliable than assuming “someone will remember”.
Every business needs funds which arise from investors and acquirers. These investors and acquirers routinely check patent portfolio health during diligence and fundraising. A lapsed filing during a funding round depicts irresponsibility and carelessness. These are exactly the kind of red flags that can affect valuation or deal terms, not just a legal technicality, but a real and tangible business cost.
| # | Milestone | Deadline
(from priority date) |
Governing Provision | Consequences if missed |
| 1 | First (priority) filing | Day 1 | – | – (starting point; no deadline risk yet) |
| 2 | Convention filing in other countries/PCT filing | 12 months | Article 4, Paris Convention; Section 44, Patents Act 1970 (India) | Loss of priority claim; later filing treated as fresh application, exposed to intervening prior art |
| 3 | PCT national phase entry | 30 months (31 months in India) | Article 22, PCT; Rule 20(4)(i), Patent Rules (India) | Application deemed withdrawn in that country; limited late-entry only via petition/surcharge, not guaranteed. |
| 4 | Request for examination (India-specific) | 48 months from priority/filing date | Section 11B, Patents Act 1970; Rule 24B, Patent Rules | Application treated as withdrawn |
| 5 | Renewal/annuity payments (post-grant, recurring) | Annually, from 3rd year onward | Section 53(2), Patents Act 1970 | Patent lapses; limited restoration window exists but is not automatic. |
Conclusion
The other important thing to keep in mind is that even though both – patent terms of 20 year duration & procedural filing deadlines (priority & pcts) run independently of each other. Confusing these two clocks up front itself is the biggest risk that you as a founder could possibly take.
Here’s what happens if you confuse the priorities:
- Under the Paris convention agreement, priority application window (i.e. period in which you can file a patent application for all jurisdictions) starts after an initial application for patent grant was filed. And this period lasts only for 12months from the date of filing.
- In comparison, the PCT application window (considered as “life savior” for many early stage startup founders!) allows a much larger span of time for applications. For example, in our country (India), it lasts for 31 months from the date of earliest application and further extendable by 1month as per domestic law of some countries. So missing out one of these dates leads to game over situations for business especially during crunch times such as raising funds, investor due diligence or entering into markets.
Thus, I recommend that every founder should take IP deadlines as seriously as he/she takes compliance and tax related deadlines. Install docketing software, hire external counsel responsible and knowledgeable in your domain – instead relying on informal calendars or keeping track via your own memory.
In addition, it would help to involve yourself personally in routinely checking status and chasing updates with your patent attorney, preferably early on. This will avoid most of the issues that we have described above. After all, patent protection cannot be assumed to fall off gradually unless there were clear warnings! Instead they will evaporate suddenly and forever. Therefore, spending on precautions such as consulting experts (ip counsels) and docketing software shall always pay back to you in the long run.
Author:- Shambhavi Agrawal, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
End Notes
- The Patents Act, 1970, § 53, No. 39, Acts of Parliament, 1970 (India).
- Agreement on Trade-Related Aspects of Intellectual Property Rights art. 33, Apr. 15, 1994, 1869 U.N.T.S. 299.
- Paris Convention for the Protection of Industrial Property art. 4, Mar. 20, 1883, as revised, 828 U.N.T.S. 305.
- The Patents Act, 1970, § 44, No. 39, Acts of Parliament, 1970 (India).
- The Patents Act, 1970, § 2(1)(l), No. 39, Acts of Parliament, 1970 (India).
- The Patents Act, 1970, § 25, No. 39, Acts of Parliament, 1970 (India).
- Patent Cooperation Treaty art. 22, June 19, 1970, 28 U.S.T. 7645, 1160 U.N.T.S. 231.
- Patents Rules, 2003, r. 20(4)(i) (India).
- The Patents Act, 1970, § 11B, No. 39, Acts of Parliament, 1970 (India).
- Patents Rules, 2003, r. 24B (India).
- The Patents Act, 1970, § 53(2), No. 39, Acts of Parliament, 1970 (India).
- Patents Rules, 2003 (India) — provision governing late national phase entry via petition/surcharge.