PCT Receiving Office Guidelines
Chapter VII: Priority Claims and Priority Documents
166A. Restoration of the Right of Priority — Non-Acceptance by Receiving Office. Where a receiving Office has notified the International Bureau under Rule 26bis.3(j) of the incompatibility of Rule 26bis.3(a) to (i) with the national law applied by that Office, but nevertheless receives a request to restore the priority right, the receiving Office promptly requests the International Bureau as receiving Office to agree, in accordance with the procedure outlined in paragraphs 278 to 281, to the transmittal of the international application under Section 333(b) and (c). An Office may also proceed in this manner if it only applies one of the applicable criteria.
166B. Restoration of the Right of Priority. The receiving Office checks if the request form contains a request by the applicant to restore the right of priority in Box No. VI. If such a request to restore is filed subsequently, the receiving Office promptly notifies the International Bureau of the request (item 6 of Form PCT/RO/118). The receiving Office then checks whether the following requirements are met:
(a) A priority claim to an earlier application is made in the international application or is subsequently added, pursuant to Rule 26bis.1(a).
(b) A statement of reasons for failure to file the international application within the priority period has been furnished (see also paragraph 166F below).
(c) The fee for requesting restoration, if applicable, has been paid (Rule 26bis.3(d)). The time limit for payment of the fee may be extended for a period of up to two months from the expiration of the time limit under Rule 26bis.3(e).
(d) If required by the receiving Office, a declaration or evidence in support of the statement of reasons for failure to file the international application within the priority period has been furnished.
If any of the above requirements are not complied with, the receiving Office notifies the applicant (Form PCT/RO/158) of the deficiency. If the receiving Office intends to refuse the request to restore the right of priority, it should so indicate in detail in Form PCT/RO/158 and provide the applicant an opportunity to make observations within a reasonable time limit.
166C. Separate Request to Restore the Right of Priority. A request to restore the right of priority may also be submitted separately from the request form. The receiving Office should process such separate requests in the same manner and according to the procedures outlined in paragraphs 166A to 166I.
166D. Time Limit for Requesting Restoration of the Right of Priority. The time limit to request to restore the priority right and to comply with the requirements listed in paragraphs (a), (b) and (c) of paragraph 166B above is two months from the date on which the priority period expired. Where the applicant makes a request for early publication under Article 21(2)(b), any request to restore the right of priority must be submitted and the requirements mentioned above must be complied with before the technical preparations for international publication have been completed (Rule 26bis.3(e)). If the receiving Office requires the applicant to provide a declaration or evidence in support of the statement of reasons for failure to timely file the international application (Rule 26bis.3(f)), it invites the applicant within a time limit which is reasonable under the circumstances, to furnish such documents. If the receiving Office intends to refuse the request to restore the right of priority (Rule 26bis.3(g)), it allows the applicant to make observations within a time limit which is reasonable under the circumstances (Form PCT/RO/158). In this notification, the receiving Office may also request that a declaration or evidence be furnished (see paragraph 166G).
166E. Decision to Restore the Right of Priority. The receiving Office, when deciding on a request for restoration, is free to apply either the more strict criterion of “due care” or the less strict criterion of “unintentionality” (Rule 26bis.3(a)). The receiving Office may also apply both criteria. In such a case, the Office is free to apply, upon request by the applicant or at its own initiative, first the “due care” criterion and, if it finds that that criterion is not satisfied, the “unintentionality” criterion. If the receiving Office applies both criteria and finds that the failure to timely file the international application was unintentional but that due care had not been exercised, the receiving Office may indicate this intent to partially refuse restoration of priority under the due care criterion in Form PCT/RO/158, and explain that restoration will nevertheless be allowed under the unintentional criterion, by text in the Annex to that Form. If the applicant requests the restoration of multiple priority claims, and where the use of a single Form (PCT/RO/158 and/or PCT/RO/159) would not be sufficiently clear, the receiving Office should use a separate Form for each priority claim concerned.
166F. Statement of Reasons. Rule 26bis.3(b)(ii) requires that a request to restore the right of priority should state the reasons for failure to timely file the international application. The applicant should therefore provide a summary of the facts or circumstances surrounding the failure to file the international application in time including, where applicable, actions that were taken by the applicant to prepare and file the international application.
166G. Declaration and Evidence. Under Rule 26bis.3(f), the receiving Office may require a declaration or other evidence in support of the statement of reasons be furnished or, if some evidence has already been provided, that additional evidence be furnished. For the unintentionality criterion, a statement indicating that the failure to comply with the priority period was not intentional should generally be sufficient. The receiving Office may, however, require that this statement be submitted in the form of a declaration. For the due care criterion, the receiving Office may require that the statement of reasons is substantiated with a declaration or evidence. The submitted declaration or evidence should enable the receiving Office to determine whether the failure to file the international application within the priority period occurred in spite of due care, that is, if all reasonable care was taken under the circumstances to ensure that the priority period would not be missed.
166H. The receiving Office restores the right of priority if the Office finds that a criterion applied by it is satisfied. Since a positive finding of due care in effect encompasses a finding of unintentional conduct, if the receiving Office applies both criteria, and unless the applicant requests otherwise, it should generally first apply the due care criterion, and only if this standard has not been complied with, apply the unintentionality criterion.
166I. As soon as the receiving Office has come to a decision on the request to restore the priority right, it notifies the applicant of its decision (Form PCT/RO/159) and furnishes a copy thereof to the International Bureau (Rule 26bis.3(h)).