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.

Actions that can be taken when the 12-month priority period has been missed, and consequences for the timeline of the international application

Q. I missed the 12-month priority period for filing a PCT application, but fortunately I discovered the mistake before the expiration of two months after the expiration of the priority period. What options do I have, and how will the timeline of my international application be affected?

A: It is recalled that, in order to validly claim priority of an earlier application, an international application must always be filed within the priority period, which is 12 months from the filing date of the earlier application, the priority of which is claimed (see Article 4C of the Paris Convention for the Protection of Industrial Property and PCT Rule 2.4); otherwise, the right of priority maybe lost.

Below is a list of the possible courses of action that are available to you, together with information that you should be aware of when taking such actions.

1) Not claiming priority of an earlier application

One possible option would be to not claim priority of the earlier application. If you choose not to claim priority of the earlier application, then the timeline for the international phase will be calculated from the international filing date, and you will have more time before entering the national phase. However, this would be a risky action to take bearing in mind the consequences that it might have on your application if relevant prior art exists that is dated between what would have been the priority date and the international filing date.

2) Withdrawing the priority claim after filing the international application

If you file the international application and claim priority, and decide to withdraw the priority claim under PCT Rule 90bis.3 after filing, the consequences would be similar to 1), above, in terms of the possible effect on prior art. Any remaining time limits in the international timeline that have not yet expired would be recalculated from the international filing date instead of the priority date (unless another later priority claim has also been made in the application). Note that a decision to withdraw a priority claim might also be made following a business decision not to proceed with a request for restoration of the right of priority or if the receiving Office rejects a request for restoration of the right of priority (see item 4, below). It is recalled that, to be effective, the withdrawal of a priority claim must be effected prior to the end of the 30-month period.

3) Claiming priority of the earlier application and not taking any other action

If you do claim priority of an earlier application and file the international application after the expiration of 12 months from the priority date, and do not take any further action to remedy the situation, the right of priority may be lost, and you run the risk that earlier relevant prior art may be found. It is important to note that, even though the priority period has expired, the timeline in the international phase will nevertheless be calculated from the priority date as you indicated it in the application at the time of filing.

4) Claiming priority of the earlier application and requesting restoration of the right of priority

If you do not file the international application before the expiration of 12 months from the priority date, but do so within two months from the expiration of that time limit, and you claim priority of the earlier application, you may request restoration of the right of priority before the receiving Office under PCT Rule 26bis.3, which, if granted, might save your priority claim.

Note, however, that:

  • some receiving Offices have notified the International Bureau that PCT Rule 26bis.3 is incompatible with their national law, and will therefore not accept any requests for restoration of the right of priority;
  • if the receiving Office does accept such requests, you should also be aware that if you are able to establish that the missing of the 12-month period was unintentional, but you are unable to establish that the missing of the 12-month period occurred despite the exercise of due care, you face the prospect of a successful restoration only before a limited number of designated/elected Offices in the national phase, as many Offices will not restore the right of priority solely on the basis of the unintentional criterion. You would then need to balance the potential benefit of restoration before a limited number of designated/elected Offices against the fact that the 30-month period will end sooner than it would occur if priority of the earlier application were not to be claimed;
  • if you are able to establish that the missing of the 12-month period occurred despite the exercise of due care, even if you face the prospect of a successful restoration before a greater number of designated/elected Offices (compared with the number of designated/elected Offices just mentioned in connection with the "unintentional" standard), such a restoration is not effective before all possible designated/elected Offices, as some designated/elected Offices have made a reservation to this effect (PCT Rules 49ter.1(g) and 49ter.2(h)). You would then need to balance the potential benefit of restoration before those Offices which do consider requests for restoration of priority against the fact that the 30-month period will end sooner than it would occur if the priority claim of the earlier application were not to be claimed.

If you choose not to request restoration of the right of priority, or if you request restoration of the right of priority but the receiving Office refuses the request, you must keep in mind that the timeline in the international phase will nevertheless be counted from the date of the originally indicated priority claim. An applicant might, incorrectly, assume that in either of those two circumstances, the 30-month date would be calculated from the international filing date. This is not the case - as long as a priority claim is included in a PCT application, and the application indicates an international filing date which is within two months from the expiration of the 12-month priority period, the priority date serves as a basis to calculate certain time limits, including the time limit for entry into the national phase, irrespective of whether restoration of priority rights is requested by the applicant during the international phase, and irrespective of any decision on restoration by the receiving Office. It is only where the priority claim is withdrawn that the time limits would be recalculated in accordance with PCT Rule 90bis.3(d).

The risk of such an incorrect assumption serves as a reminder of one of the advantages of using ePCT to manage pending PCT applications. When the applicant dockets the 30-month date, it is possible to carry out a cross-check with the "timeline" date appearing in ePCT for the application in question. This eliminates any risk of misunderstanding as to the correct calculation of the 30-month date.

Another benefit of using ePCT to manage pending PCT applications is that, even if a docketing error were to be made about the end of the 30-month date (calculating incorrectly from the international filing date rather than calculating from the priority date), the ePCT system will provide an automated reminder e-mail message at about 28 months, warning the applicant that the 30-month date is imminent.

It is also recalled that if you do not request restoration of the right of priority during the international phase, you may still request restoration of the right of priority in the national phase (see PCT Rule 49ter.2), provided that the designated/elected Offices concerned have not opted out of the system by way of notifications of incompatibility. This might also be an interesting option to you if you know that your competent receiving Office will only apply the "unintentional" standard and which would leave you with an, albeit positive, decision that will only be accepted by a limited number of designated/elected Offices, as discussed above.

Further information on requesting the restoration of the right of priority can be found in the PCT Applicant's Guide, International Phase, paragraphs 5.062 to 5.069 (http://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf), 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

There is also a detailed table listing the receiving and designated/elected Offices which accept requests for restoration of the right of priority and the respective criteria applied by them, as well as some of the fees payable. This table will assist you in assessing the advantages and disadvantages of following various courses of action in such circumstances, and is available at:

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

Reference is also made to the Practical Advice articles that have already been written on the subject of restoration of the right of priority in PCT Newsletter Nos. 04/2007, 09/2009, 10/2009, 11/2009 and 09/2015.