PA 02/2013: Publication of information relating to the applicant’s wish to make a correction (or addition) of a priority claim, where the applicable time limit for making such a correction (or addition) in the international phase has expired

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 5 June 2012 claiming the priority of an earlier national application. I did not become aware of the fact that the filing date of the earlier application had been erroneously indicated in the request form as 23 June 2011, instead of 10 June 2011 (and was therefore published with the incorrect date), until after the publication of the international application at the beginning of January 2013. Although the priority document shows the date correctly as 10 June 2011, I did not submit it until just before publication of the international application, and therefore did not receive an invitation to correct the priority date indicated in the request. Is it still possible to correct the priority date indicated in the international application? If not, is there any other action that can be taken so that the designated Offices will be aware that the priority date in the published international application is incorrect?

A: The following advice applies to the addition of a priority claim, as well as to the correction of an existing one, as the procedures which would apply are very similar. As you did not submit the priority document containing the correct priority date until just before international publication, it would have been pointless for either the receiving Office or the International Bureau (IB) to have invited you to correct the priority claim as the applicable time limit for making such a correction under PCT Rule 26bis.1(a) had expired.

The time limit for correcting a priority claim under PCT Rule 26bis(1)(a) is 16 months from the priority date or, where the correction would cause a change in the priority date, 16 months from the priority date as so changed, whichever 16-month period expires first, provided that such a notice may be submitted until the expiration of four months from the international filing date (IFD). In your case:

(1) 16 months from the existing (defective) priority date in the request form fell on 23 October 2012;

(2) 16 months from the “correct” priority date, were a correction to be made, would have fallen on 10 October 2012;

(3)  four months from the IFD fell on 5 October 2012.

Since (1) and (2) were later than four months from the IFD, it is the earlier of (1) and (2) which applies, that is, 10 October 2012.

As the above-mentioned time limit has expired, this means that your only recourse for requesting a correction is to take up the matter with each designated (or elected) Office before which you wish to enter the national (or regional) phase, provided that this is permitted under the applicable national (or regional) law. In cases such as this one, where the priority date which cannot be corrected in the international phase is earlier than the existing one (and there are no other earlier priority claims in the application), it would be prudent for you to calculate the time limit for entry into the national phase as if the priority claim had been corrected. In your case, therefore, with the correct priority date of 10 June 2011, the 30 month time limit for entry into the national phase under PCT Article 22(1) (and 39(1)(a)) would expire on 10 December 2013 (instead of on 23 December 2013).

Note, however, that there is still one possible course of action that you can take in the international phase which may help you in the national phase. In accordance with PCT Rule 26bis.2(e), you can request the IB to publish information regarding the late correction of the priority claim. The purpose of this publication would be to alert designated (or elected) Offices and third parties to the likelihood that a correction will be requested by the applicant in the national phase (and therefore that the priority date might change), while at the same time providing a basis to request such a correction in the national phase.

If you wish to take advantage of this possibility, you must request the IB to publish this information prior to the expiration of 30 months from the (defective) priority date, which in the case of your international application, is 23 December 2013. This service is subject to the payment to the IB of a special fee, which is currently 50 Swiss francs for the first sheet plus 12 Swiss francs for each additional sheet (see Section 113(c) of the Administrative Instructions under the PCT). The information would be published on PATENTSCOPE under the “Documents” tab of the published international application under the title “Publication of Late Submitted Request to Correct/Add Priority Claims”. It is important to note that the fact that this information is published on PATENTSCOPE does not have the effect of a correction of the existing priority date, however, as mentioned above, it does serve to alert Offices and third parties that a correction may be made in the national phase.

Note also that, even though the priority date indicated in the request form does not match the priority date shown on the front page of the priority document that you furnished, you can, nevertheless, request the IB to communicate that document to the designated Offices. This may increase your chances of getting the correction accepted by the designated Offices, and will remove the need for you to submit the priority document yourself to each designated Office before which you wish to enter the national phase. The document would be made publicly available on PATENTSCOPE under the “Documents” tab of the published international application, under the title “Purported P.doc for transmittal”.

Information on the procedure for correcting or adding a priority claim (when the request is made within the applicable time limit) was published in the “Practical Advice” of PCT Newsletter No. 09/1998.

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