PA 09/2009: Requesting the restoration of the right of priority under PCT Rule 26bis.3 where the receiving Office does not apply such provisions

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  I filed an international application, which, due to unavoidable circumstances, was received by the receiving Office one year and five days after the date of the only priority claim in the application.  In order to safeguard my priority claim, I would have liked to have taken advantage of the provisions under PCT Rule 26bis.3 by requesting the receiving Office to restore the right of priority, however, the receiving Office with which the application was filed has notified under PCT Rule 26bis.3(j) that the above-mentioned rule is incompatible with the national law applied by it.  Is there any other way of safeguarding the priority claim?

A:  Even if a receiving Office has notified the International Bureau (IB) of the incompatibility of PCT Rule 26bis.3 with its national law, PCT Rule 26bis.2(c)(iii), which is applicable to all receiving Offices, provides that a priority claim is not to be considered void for the purposes of the international phase if the international filing date is within two months from the date on which the priority period expired;  therefore, the date of the earlier application will still serve as a basis to calculate time limits during the international phase.  However, the fact that the priority claim is retained in the international application does not mean in any way that the validity of such a priority claim is assured in the national phase, and by taking no action at this stage, the actions required to remedy the situation before the designated Offices upon entering the national phase may be more cumbersome than those that would be required if you take action now, by requesting the restoration of the right of priority during the international phase before a receiving Office.

To do this, you could request your receiving Office, in accordance with PCT Rule 19.4(a)(iii), to transmit your international application to the International Bureau as receiving Office (RO/IB), it being a competent receiving Office for nationals and residents of all PCT Contracting States.  Since the RO/IB has not made a reservation under PCT Rule 26bis.3(j), you would then be able to request the IB, in its capacity as receiving Office, to restore the right of priority, provided that you do this within the time limit of two months from the date on which the 12-month priority period expired. 

Note that if you had already submitted a request to restore the right of priority to your national receiving Office, that Office, as an Office which does not apply PCT Rule 26bis.3, would then, subject to your approval, have requested the RO/IB to agree to the transmittal of the international application to it for further processing (see the PCT Receiving Office Guidelines, paragraph 166A).  Any such request would be considered as having been received by the RO/IB in time, provided that it had reached the national receiving Office before the expiration of the applicable time limit under PCT Rule 26bis.3(e).

If the national receiving Office transmits your international application to the RO/IB (whether it be upon your request or otherwise), such transmittal may be subjected to the payment to the national receiving Office of a fee equal to the transmittal fee (see PCT Rule 19.4(b)); other fees paid (for example, the international filing fee and the search fee) will be refunded by the national receiving Office and you will be required to pay the applicable fees (for example, the transmittal fee, the international filing fee and the search fee) to the RO/IB.  Note, however, that, although some receiving Offices charge a fee for requesting restoration of the right of priority (PCT Rule 26bis.3(d)), the RO/IB does not charge such a fee.  It is recalled that where the national receiving Office transmits an international application to the RO/IB for further processing, that application is considered to have been received by the RO/IB on the date of receipt of the international application by the national receiving Office (see PCT Rule 19.4(b)), although for the purposes of payment of the necessary fees which are due upon filing the international application, the date on which the application was actually received by the RO/IB is considered to be the date of receipt of the international application (see PCT Rule 19.4(c)).

Since, in your case, the request for restoration of a priority claim would be made after the filing of the international application, you should make your request by way of a letter to the RO/IB. Your request for restoration should preferably be accompanied by any declaration or other evidence which may be necessary in support of the statement of reasons for the failure to file the international application within the priority period (see PCT Rule 26bis.3(f)).  (Note that if a request for restoration is made at the time of filing, with either the RO/IB or another receiving Office the national law of which is compatible with PCT Rule 26bis.3, there is a special box under Box No. VI of the request form for making such a request – for further information, see the Notes to Box No. VI.)  Provided that your request for restoration meets the necessary criteria (the RO/IB applies the “due care” and the “unintentional” criterion to such requests), the RO/IB will notify you of its decision and the criterion for restoration upon which the decision was based. 

Please bear in mind, however, that even if the receiving Office restores the priority claim, the validity of that claim cannot be assured in the national phase, notably where the designated Office has notified the International Bureau of the incompatibility of PCT Rule 49ter.1 with its national law, but it may also depend on whether the designated Office applies the same criterion as the receiving Office.  Where the receiving Office has made a finding that the failure to file that international application within the priority period occurred in spite of “due care” having been taken, that restoration is effective in each State (PCT Rule 49ter.1).  However, where the receiving Office has restored a right of priority under PCT Rule 26bis.3 based on a finding that the failure to file that international application within the priority period was “unintentional”, the restoration will only be effective in designated States whose applicable national law provides for restoration based on that criterion, or on a criterion which is more favorable than that criterion (PCT Rule 49ter.1(b)).

Another option which is available to you, other than requesting the restoration of the right of priority during the international phase, is to request the restoration of the right of priority before each designated Office (PCT Rule 49ter.2).  In accordance with PCT Rule 49ter.2(b)(i), such a request should be made within one month from the time limit under PCT Article 22.  Such request will not, however, be accepted by designated Offices which have made a reservation under PCT Rule 49ter.2(h).

For information on which Offices have made reservations in relation to PCT Rules 26bis.3(j) (“Restoration of Right of Priority by Receiving Office”), 49ter.1(g) (“Effect of Restoration of Right of Priority by Receiving Office [in DesignatedState]”) and 49ter.2(h) (“Restoration of Right of Priority by Designated Office”), see the table at:

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

For further information on requesting the restoration of the right of priority, see the “Practical Advice” published in PCT Newsletter No. 04/2007, the PCT Applicant’s Guide, International Phase, paragraphs 98A to H, and the part of the “Frequently Asked Questions:  Amendments to the PCT Regulations (April 1, 2007)” concerning the restoration of the right of priority at:

http://www.wipo.int/pct/en/faqs/april07_faq.html#2007_restoration

 

References: r_26bis_pct; r_19_pct;

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