PA 09/2015: How to make a request for restoration of the right of priority, and the furnishing of declarations and evidence relating to such requests

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 am the agent for a soon-to-be-filed international application in which we would like to claim the priority of an earlier application. Unfortunately, for reasons beyond our control, we have not been able to file the international application within the 12-month priority period, which expired a week ago. We therefore intend to file a request for restoration of the right of priority under PCT Rule 26bis.3 with the receiving Office (which is prepared to consider such requests). Please could you explain how to make such a request, and what information must be given to support our request?

A: You can make a request for restoration of the right of priority at the time of filing the application, or later, provided that it is made within two months from the date of the expiration of the priority period (PCT Rule 26bis.3(e)). You must also ensure that your international application claims the priority of the earlier application (if it does not, you can submit, within the above-mentioned time limit, a notice under PCT Rule 26bis.1(a) adding the priority claim (PCT Rule 26bis.3(c)).

You can request restoration of the right of priority at the time of filing, directly on the request form (PCT/RO/101) (see the option under Box No. VI), in the ePCT-Filing system or in the PCT‑SAFE software. In the case of the paper request form, if you include multiple priority claims, you should clarify in the Supplemental Box the priority claim in respect of which you wish to request restoration. Alternatively, you may file a separate request for restoration of the right of priority, by way of a letter to the receiving Office, within the time limit under PCT Rule 26bis.3(e).

The receiving Office (RO) with which you file your request for restoration of the right of priority may charge a fee for making such a request, payable within two months from the date on which the priority period expired (but subject to a possible extension of up to two months), and so you should check with your Office whether such a fee is payable – see the information contained in the table entitled “Restoration of the right of priority by receiving Offices and designated Offices under PCT Rules 26bis.3 and 49ter.2” (restoration table) at:

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

or contact the Office concerned directly.

In addition to your request for restoration, you should furnish the following information, either in the same document as the request for restoration, or in a separate document, provided that it is filed within the time limit under PCT Rule 26bis.3(e)):

  • an indication (for example on a cover sheet) of the international application number and international filing date (if known), the name(s) of the applicant(s) and agent, and the title of the invention;
  • details of the earlier application, the priority of which is being claimed, if it is not obvious from the request form;
  • the reasons for the failure to file the international application within the priority period (PCT Rule 26bis.3(b)(ii)) (“statement of reasons”); and
  • preferably a declaration or other evidence in support of the statement (PCT Rule 26bis.3(b)(iii)), including, where applicable, actions that were taken to prepare and file the international application (“declaration/evidence”).

Statement of reasons

The way in which you prepare your statement of reasons may depend on which criterion your receiving Office applies to requests for restoration of the right of priority, that is, in ascertaining whether the failure to file the international application within the priority period:

  • occurred in spite of due care required by the circumstances having been taken; or
  • was unintentional

noting that some Offices may apply both criteria, looking first at whether the most stringent criterion, “due care”, applies to your situation. Information on the criteria applied by Offices, where the Offices concerned have so notified the International Bureau, is available in the above-mentioned restoration table.

In order to meet the “due care” criterion, the statement should describe in detail the facts and circumstances that led to the late filing, as well as any remedial or alternative steps taken to attempt a timely filing of the international application. The requirements to be met under the criterion of “unintentionality” are usually less stringent than this, and for many Offices, it may be sufficient to simply furnish a statement indicating that the failure to comply with the priority period did not occur on purpose (if that is indeed the case). Some Offices which apply this criterion may, nevertheless, require that the statement be submitted in the form of a declaration, and may require that the statement provide the reasons for the failure, supported by evidence if necessary.

Declaration/evidence

As mentioned above, the RO may require that the statement of reasons be supported by a declaration or other evidence which would enable it to determine whether the failure to file the international application within the priority period occurred in spite of due care. In most cases, such declarations or evidence will not be required where the RO applies the “unintentional” criterion.

There is no specific format for the accompanying declaration under PCT Rule 26bis.3(b)(iii), nor is there any prescribed wording to substantiate or provide evidence relating to it. However, it is advisable to provide any documentation that you may have that, in your view, shows that the failure to file the application within the priority period occurred in spite of all reasonable care required by the circumstances having being taken to ensure that the priority period would not be missed. In general, in order to meet the “due care” criterion, a declaration and evidence may be required, whereas in order to meet the “unintentional” criterion, a statement is usually sufficient. (See the PCT Receiving Office Guidelines, paragraphs 166F and 166G at: http://www.wipo.int/pct/en/texts/gdlines.html)

Opportunity to provide further observations, evidence or declarations

The RO decides, on a case-by-case basis, whether a restoration criterion is fulfilled or not, taking into account the specificities of the case. If the RO intends to refuse to restore the right of priority, it will give you the opportunity to make observations on the intended refusal, and where appropriate, it may, under PCT Rule 26bis.3(f), request you to file a declaration or other evidence, or further observations, declarations or evidence, as the case may be (see Form PCT/RO/158).

Although it is possible to request restoration during the national phase before any DOs in respect of which PCT Rule 49ter.2 applies under the applicable national law, in general it is preferable that, whenever possible, you request the restoration of the right of priority before the RO in the international phase. This is the most simple and cost‑effective way, and in many cases will have effect before the designated Offices in the national phase. However, you should be aware that some DOs may not accept the decision of the RO, in particular where the RO has applied the “unintentional” criterion and the DO applies the “due care” criterion (please refer to the restoration table mentioned above for information about which criterion is applied by each Office concerned), or where the DO has filed a notification of incompatibility under PCT Rule 49ter.1(g). For information about which Offices have filed such a notification, please refer to the table entitled “PCT Reservations, Declarations, Notifications and Incompatibilities” at:

http://www.wipo.int/pct/en/texts/reservations/res_incomp.html

The situation where a RO or DO has filed a notification of incompatibility with the PCT Rules relating to the restoration of the right of priority, as well as the implications in the national phase of a decision of the RO about whether or not to restore the right of priority in respect of an international application, are discussed in the Practical Advice articles published in PCT Newsletter Nos. 04/2007, and 09, 10 and 11/2009 at, respectively:

http://www.wipo.int/edocs/pctndocs/en/2007/pct_news_2007_4.pdf

http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_09.pdf

http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_10.pdf

http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_11.pdf

For further information on requesting the restoration of the right of priority see the PCT Applicant’s Guide, paragraphs 5.062 to 5.069 at:

http://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf

Information in the form of guidelines for the use of ROs may also be of use to applicants, and is available in paragraphs 166A to O of the PCT Receiving Office Guidelines at:

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

Applicants are always strongly advised to file international applications within a reasonable period of time before the end of the 12-month priority period. This helps to avoid situations where the priority period is missed due to unforeseen problems.

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