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.
How to correct the priority date of an international application
Q: I submitted an international application several months ago and have now received a Form PCT/RO/110 indicating that the filing date of the earlier application does not fall within the period of 12 months preceding the international filing date. I now realize that I used the incorrect date format and indicated December 7, 2022 as 12.07.22 instead of 07.12.22. Can I correct the priority date? Is there a time-limit for doing so and with which authority should I request correction?
A: Priority claims can be corrected if requested within the applicable time limit. Let's first look at some of the terminology that is particularly relevant when it comes to correcting or adding priority claims.
When an international application contains a priority claim, “priority date” means the filing date of the application whose priority is claimed. If it contains two or more priority claims, “priority date” means the filing date of the earliest application whose priority is claimed. Where an international application does not contain any priority claim, “priority date” means the filing date of the international application.
The “priority period” means the period of 12 months starting from the filing date of the earlier (or earliest if there is more than one) application whose priority is claimed in the international application. If the end of the 12-month period falls on a day that is a non-working day or an official holiday for the receiving Office, the priority period will expire on the following working day (refer to PCT Rules 2.4(b) and 80.5). In order to validly claim priority, an international application must always be filed within the priority period. If the international application is filed after the expiration of the priority period but within a certain time limit, it may be possible, under limited circumstances, to request restoration of the right of priority (more information can be found under PCT Rule 26bis.3(e) and paragraphs 5.062 to 5.069 of the PCT Applicant’s Guide, International Phase, at https://www.wipo.int/pct/en/guide/ip05.html#_5.062 et seq.). This, however, will not apply to all Contracting States as this provision is not compatible with the national law applied by the receiving Office of certain States (please refer to https://www.wipo.int/pct/en/texts/reservations/res_incomp.html for the receiving Offices that have notified the International Bureau (IB) of the incompatibility under PCT Rule 26bis.3(j)).
Each date appearing in the international application or in any related correspondence must be indicated by the Arabic number of the day, the name of the month and the Arabic number of the year, in that order (dd month yyyy) in accordance with Section 110 of the Administrative Instructions under the Patent Cooperation Treaty. In the request, after, below or above that indication, the date should be repeated in parentheses with a two-digit Arabic numeral each for the number of the day and the number of the month, and the number of the year must be indicated in four digits, in that order and separated by periods, slants or hyphens, for example:
7 December 2023 (07.12.2023)
or 7 December 2023 (07/12/2023)
or 7 December 2023 (07-12-2023)
The purpose for this double-indication is precisely to help avoid the kind of error that has happened in your case. Where the two dates do not match, the receiving Office or the IB can bring this to the attention of the applicant or even, if what was intended is sufficiently clear to the Office or Bureau, correct one of the dates ex officio. It should also be noted that such inaccuracies can also be avoided by using ePCT for the submission of international applications where each priority claim is validated by ePCT to ensure compliance with the legal provisions of the PCT for claiming priority.
With that background in mind, we can come more specifically to your question: a priority claim can be corrected or added to the request by a notice submitted by the applicant (or agent of record) to the receiving Office or the IB (a copy to both is advisable with the copy to IB uploaded via ePCT as a document type “Priority Claims/Priority Documents – Correction or addition of priority claim (PCT Rule 26bis.1)”). The time limit for submitting the notice is 16 months from the priority date or, where the correction or addition causes a change in the priority date, within 16 months from the priority date as so changed, whichever 16-month period expires first. Furthermore, irrespective of when the applicable 16-month period expires, the notice can always be submitted before the expiration of four months from the international filing date. For more information, please refer to PCT Rule 26bis at:
https://www.wipo.int/pct/en/texts/rules/r26bis.html#_26bis
It should be noted that failure to respond to the Form PCT/RO/110 (Invitation to Correct Priority Claim and/or Notification of Possibility to Request Restoration of the Right of Priority) within the prescribed time limit may result in the priority claim concerned being considered void for the purposes of the procedure under the PCT (see PCT Rule 26bis.2(b)). However, if the international filing date is later than the date on which the priority period expired, but is within two months from that date, the priority claim will not be considered void merely for this reason, even if no correction is submitted (see PCT Rule 26bis.2(c)(iii)). In such a case, as mentioned above, you can submit a request to the receiving Office to restore the right of priority provided that a notification of incompatibility under PCT Rule 26bis.3(j) does not apply (refer to the explanation above). Where no request for restoration of the priority right is timely submitted to the receiving Office or the request was unsuccessful, the applicant can still request restoration of the priority right at the time of national phase entry under PCT Rule 49ter.2.