PA 12/2009: Requesting the reinstatement of rights after missing the time limit for entry into the national phase

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 on 10 August 2007, a few days after the expiration of the 12 months priority period (priority date: 4 August 2006).  I was notified by my receiving Office that I had the possibility of submitting a request to restore the right of priority under PCT Rule 26bis.3, but decided not to take any action.  By doing so, I presumed that my priority claim would be disregarded, and that this would effectively give me more time to prepare my application for entry into the national phase.  However, when I was preparing the file for national phase entry during the month of November 2009, I noticed that the priority date of 4 August 2006 was indicated on the forms which had been sent to me by the receiving Office and the International Bureau.  Upon contacting the receiving Office about this, they confirmed to me that even though the international filing date was more than 12 months after the priority date, the priority date had not been considered void and that all PCT time limits would be calculated from that date.  It was then that I realized that I had missed the time limit for entry into the national phase, which expired on 4 February 2009.  Is it possible to withdraw the priority claim so that the date for entry into the national phase can be recalculated to 10 February 2010, or is there anything else that I can do to reinstate my application before the Offices concerned?

A:  PCT Rule 26bis.2(c)(iii) provides that a priority claim will not be considered void only because the international filing date is later than the date on which the priority period expired, provided that the international filing date is within the period of two months from that date.  This is why the date of your earlier application still served as a basis to calculate the time limit for entry into the national phase, and, by failing to perform the acts referred to in PCT Article 22 within the applicable time limit, your application will, in accordance with PCT Article 24(1)(iii), have ceased to have effect before the designated (or elected) Offices.

If you had wanted the time limits to be calculated as from the international filing date, you would have had to withdraw the priority claim.  However, it is too late to do this now because the applicable time limit for withdrawing the priority claim (30 months from the priority date (see PCT Rule 90bis.3)) has also expired.  Furthermore, as already stated above, PCT Rule 26bis.2(c)(iii) prohibits the receiving Office and the International Bureau (IB) from declaring the priority claim as void.

It may, however, be possible for you to make a request under PCT Rule 49.6 (“Reinstatement of Rights after Failure to Perform the Acts Referred to in Article 22”), before the designated Offices.  Such a request should be submitted either two months from the date of removal of the cause of the failure to meet the time limit for entry into the national phase or 12 months from the date of expiration of the applicable time limit under PCT Article 22, whichever expires first.  The day when you realized that the priority claim had not been considered void should probably be considered as the time at which the removal of the cause of the failure to meet the time limit took place, thus you would have two months from that date (this time limit will expire before the time limit of 12 months from the expiration of the time limit for entering the national phase).  You may even be able to submit the request later, if so permitted by the national law applicable by the designated Office concerned.  It is, however, recommended that you submit your request for reinstatement as soon as possible.

Designated Offices are, subject to certain exceptions, obliged to allow reinstatement of rights with respect to a particular international application where the applicant has failed to enter the national phase within the applicable time limit, provided that the requirements under PCT Rule 49.6 are met, namely, that you can show that you missed the time limit to enter the national phase either unintentionally or in spite of due care, depending on the criteria applied by the Office.  Note, however, that certain Offices have made a reservation in this respect – for a list of those Offices which have informed the IB that PCT Rule 49.6 is not compatible with the national law applied by them (at the time of writing, there are 12 Offices which have made such a reservation), see under “PCT Rule 49.6(f)” in the table of “Reservations and Incompatibilities” at:

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

Please note that even if an Office is on that list, reinstatement might still be possible under the applicable national law of the State concerned, and in some cases, this may be more permissive than under PCT Rule 49.6.  In such a case, the Office will apply its own national law standards, and not PCT Rule 49.6.

The possibility of making a request under PCT Rule 49.6 should be pursued before each designated Office individually, and only as far as that Office is concerned. If you make such a request before any of the designated Offices, it should state the reasons for the failure to comply with the applicable time limit under PCT Article 22 (or 39(1), as the case may be) (PCT Rule 49.6(c)), and the national law applicable by the designated Office may require that a fee be paid (PCT Rule 49.6(d)(i)), and that a declaration or other evidence in support of the reasons referred to above be filed (PCT Rule 49.6(d)(ii)).  Note that, at the same time as requesting the reinstatement of your application, you must perform all acts required for entry into the national phase.

Information as to any possibilities of reinstatement where the time limit for national phase entry was missed, as well as details of the applicable requirements of the various designated Offices can be found, for each PCT Contracting State, in the corresponding National Chapter of the PCT Applicant’s Guide, under the heading “Excuse of delays in meeting time limits”.  It is, nevertheless, recommended that you seek assistance from local patent attorneys who will be familiar with the various national laws applicable in such situations.

 

References: r_26bis_pct; a_22_pct; a_24_pct; r_90bis_pct; r_49_pct;

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