**This article is an update of the IPconnect blog article dated October 14th, 2010 and supersedes that article.**

You have a provisional application that was filed on June 15, 2012 and your client wants to file both a U.S. utility and a PCT application claiming priority to the provisional.    June 15, 2013 is a Saturday, so you think that you can file both applications on Monday, June 17, 2013 because of the Sat/Sun/Holiday rule in the US, right?

Well … maybe so and maybe not.   When filing a PCT application, we always need to remember that it is a foreign application – even though we normally file it in the USPTO (that is, in the US Receiving Office that is physically located in the USPTO), it is not subject to US laws.  Assuming that the Sat/Sun/Holiday rule applies to PCT applications may be a very costly mistake.

First, let’s define the “priority year” for a provisional application.  When the law first came into effect  on June 8, 1995, the term of a provisional application was exactly 12 months, counting from the day after the filing date and ending on the anniversary date of the filing.  The Sat/Sun/Holiday rule did not apply.  However, effective November 29, 1999, 35 U.S.C. 119(e)(3) was amended to extend the period of pendency to the next succeeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday or Federal holiday within the District of Columbia.

The Saturday/Sunday/Holiday rule is defined at:

35 U.S.C. 21  Filing date and day for taking action
(b)  When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal Holiday within the District of Columbia the action may be taken, or the fees paid, on the next succeeding secular or business day.

So, according to this rule, we know that the U.S. utility application can be filed on June 17, 2013 and the priority claim to June 15, 2012 will be valid.  However, does this apply to PCT applications?  The Patent Cooperation Treaty is a law unto itself – literally!  That means that we need to find out what the current PCT law is for priority dates.  Rule 2.4 of the treaty reads:

2.4   “Priority Period”

(a)          Whenever the term “priority period” is used in relation to a priority claim, it shall be construed as meaning the period of 12 months from the filing date of the earlier application whose priority is so claimed.  The day of filing of the earlier application shall not be included in that period.

(b)          Rule 80.5 shall apply mutatis mutandis to the priority period.

If you just look at 2.4(a) – it certainly limits the priority year to a definite 12 months from the filing date – no Sat/Sun/Holiday rule here.  But … what is Rule 80.5? 

80.5        Expiration on a Non-Working Day or Official Holiday

If the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day:

     (i)   on which such Office or organization is not open to the public for the purposes of the transaction of official business;
     (ii)   on which ordinary mail is not delivered in the locality in which such Office or organization is situated;
     (iii)   which, where such Office or organization is situated in more than one locality, is an official holiday in at least one of the localities in which such Office or organization is situated, and in circumstances where the national laws applicable by the Office or organization, provides, in respect of national  applications, that, in such a case, such period shall expire on a subsequent day, or
     (iv)   which, where such Office is the government authority of a Contracting State entrusted with the granting of patents, is an official holiday in part of that Contracting State, and in circumstances where the national law applicable by that Office provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day;

the period shall expire on the next subsequent day on which none of the said four circumstances exists.

Note that the rule indicates “OR” and not “AND” – this means that we only need to find one of the above situations that can be applied to the USRO on Saturdays, Sundays and Holidays in order to provide us with confirmation that a PCT application can be filed on the following work day, when the priority year ends on a Saturday, Sunday or Holiday.

80.5(i) indicates that if the Office (USPTO) is closed to the “public for the purposes of the transaction of official business”  the day is extended to the next working day. Since I can file applications on Saturdays, Sundays and holidays, is this rule applicable? How is “for the purposes of the transaction of official business” defined? Is “official business” the filing of applications? If so, then the Office is “open to the public for the purposes of the transaction of official business” on Saturdays, Sundays & Holidays, and this rule does not extend the due date for the priority year.

80.5(ii) indicates that if  “ordinary mail is not delivered” on any day, the due date is extended to the next business day.  This covers Sundays and Holidays, but mail is delivered on Saturday, so this rule does not apply to the due date if the due date falls on a Saturday.

80.5(iii) indicates that if there are more than one “official” location of the USPTO, and there is a holiday in any of those jurisdictions, then the due date is extended to the next business day. So, this covers any holiday in the District of Colombia, but still doesn’t cover Saturdays.

80.5(iv) indicates that if:

     the Office is the government authority entrusted with the granting of patents (which it is); and
     the USPTO allows due dates to be extended to the next working day following Saturday, Sunday or Holidays, for the filing us U.S. national patent applications,

then the due date is extended to the next subsequent working day. YAY! This covers us and allows us to apply the Sat/Sun/Hol rule to PCT applications.

Now isn’t this nice?  Rule 80.5(iv) effectively modifies the 12 month hard deadline under Rule 2.4(a) to include the Sat/Sun/Holiday rule.  This modification is fairly recent – and I for one am very glad that it was enacted.

Since this amendment is so recent, many of us who have been practicing in this field for a long time may not be aware that rule 80.5 has modified the due date.  I certainly wasn’t – not until very recently.  I’m glad that I found this “new” rule!

So, go out there and have fun!  Show off your knowledge!  🙂

Let me know if you have any questions.  I’ll respond on the blog.  Or you can always email me.

Disclaimer:  as usual, this is not legal advice.  Talk to your attorney about your specific situation.

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