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.

Restoration of the right of priority where the international application is filed more than 12 months from the filing date of the earlier application whose priority is claimed.

Q: I am just about to file an international application in which the priority of an earlier national application is claimed. Unfortunately, however, I have missed the 12-month priority period as the earlier application was filed 12 months and two weeks ago. Is it possible to restore the right of priority, and if so, how do I do this?

A: Amendments to the PCT Regulations have been made, with effect from 1 April 2007, to enable the applicant to restore the right of priority of an earlier filed application if the international application is filed outside the priority period (that is, after the expiration of 12 months from the filing date of the earlier application whose priority is claimed (PCT Rule 2.4)), provided that the international application is filed within two months from the date on which the priority period expired. For example, if your earlier application had been filed on 1 March 2006, the priority period would have expired on 1 March 2007, and, provided your international application is filed by 1 May 2007, it may still be possible for you to request the restoration of the right of priority.

If you include the priority claim and you do not request the restoration of the right of priority, the receiving Office, provided that that Office has not notified the International Bureau (IB) of the incompatibility of PCT Rule 26bis.3 with its national law (for a list of such Offices, see: www.wipo.int/pct/en/texts/reservations/res_incomp.pdf), may notify you of the possibility of submitting to the receiving Office a request to restore the right of priority by way of revised Form PCT/RO/110 ("Invitation to Correct Priority Claim and/or Notification of Possibility to Request Restoration of the Right of Priority").

Such a request for the restoration of the right of priority may be made, subject to certain conditions, during the international phase before the receiving Office (PCT Rule 26bis.3), or later, during the national phase, before the designated Office (PCT Rule 49ter.2). The conditions and procedures applicable before each authority are discussed, separately, below.

(A) Request for the restoration of the right of priority during the international phase

PCT Rule 26bis.3 "Restoration of the Right of Priority by Receiving Office"

It may be more beneficial for applicants to request the restoration of the right of priority initially during the international phase with the receiving Office, as the decision of the receiving Office may have effect in many of the designated Offices. Note, however, that it is not possible to restore the priority claim before the receiving Office in all situations, and it is not possible to do so before all receiving Offices - there are several conditions which must be met, and actions that must be taken, as described below:

(1) The international application must be filed on or after 1 April 2007 (the date of entry into force of the new rule).

(2) The receiving Office with which the international application is filed should be one which has not filed a notice under PCT Rule 26bis.3(j) of the incompatibility of PCT Rule 26bis.3(a) to (i) with its national law - requests for the restoration of the right of priority should not be made before the receiving Offices of the States and intergovernmental organization that have notified the IB of such incompatibility1. If the receiving Office with which you normally file is one of these Offices, you have the usual option of filing your international application with the IB as receiving Office (RO/IB), which does allow for the restoration of the right of priority. Notwithstanding, if you do file an application with a receiving Office which has notified the IB of such incompatibility, the receiving Office may apply the procedure under PCT Rule 19.4(a)(iii) whereby it will transmit the application to RO/IB.

Furthermore, even if a receiving Office has notified the IB of the incompatibility of PCT Rule 26bis.3 with its national law, PCT Rule 26bis.2(c)(iii), which is applicable in respect of all receiving Offices, provides that a priority claim shall not be considered void if the international filing date is within two months from the date on which the priority period expired. Also, the date of the earlier application will serve as a basis to calculate time limits during the international phase.

(3) Depending on the criteria applied by the receiving Office2, one of the following criteria for restoration must be satisfied:

a) the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having being taken; or

b) the failure to file the international application within the priority period was unintentional.

Note that some receiving Offices will, if the applicant so requests, apply both criteria - first “due care” and then the more lenient “unintentional”.

If conditions (1) and (2) are met and you think that the applicable criterion for restoration of the right of priority under (3) can be satisfied, the following actions must be taken, where applicable:

(4) The request for restoration of the right of priority (hereinafter: “request for restoration”) must be filed with the receiving Office within the time limit of two months from the expiration of the priority period; if made at the time of filing the international application, it should preferably be made by using the Section provided for this purpose in Box No. VI “Priority Claim” of the request form dated 1 April 2007. If filed separately, it can be submitted in a letter (there is no specific form for this).

(5) The request for restoration must be supplemented by a statement explaining the reasons for failure to file the international application within the priority period. That statement should indicate, for each earlier application concerned, the filing date, the earlier application number and the name or two-letter code of the country, Member of the World Trade Organization, regional Office or receiving Office. Then, for each earlier application concerned, the applicant should state the reasons for the failure to file the international application within the priority period (PCT Rules 26bis.3(a) and 26bis.3(b)(ii)).

(6) Some receiving Offices2 may require the payment of a fee, which should be paid within the time limit of two months from the expiration of the priority period (PCT Rule 26bis.3(e)).

(7) Some receiving Offices2 may require the furnishing, within a reasonable time limit, of a declaration or other evidence in support of the statement of reasons (PCT Rule 26bis.3(f)). This should preferably be submitted to the receiving Office together with the request for restoration.

Note that the time limit for submitting the request for restoration and/or, if applicable, the fee payable therefor, may be less than two months from the expiration of the priority period where the applicant makes a request for early publication under PCT Article 21(2)(b), in which case they should be submitted before the completion of technical preparations for publication (PCT Rule 26bis.3(e)).

For the restoration of the right of priority to be effective, the receiving Office must find that the criterion applied by it has been satisfied. When the receiving Office has made a decision on the request for restoration, it will notify the applicant and the International Bureau of its decision and of the criterion for restoration upon which the decision was based (PCT Rule 26bis.3(h)(iii)). It is important to note that even if the receiving Office restores the priority claim, the validity of the priority claim in the national phase cannot be assured (see further details about the designated office, below).

Rule 49ter.1 "Effect of Restoration of Right of Priority by Receiving Office" on designated Office

(1) Where the right of priority has been restored by the receiving Office:

The restoration of the right of priority by the receiving Office is, in principle, binding on the designated Office, but a limited review by the latter is possible. Whether the designated Office accepts the decision of the receiving Office will depend on:

(a) whether the designated Office has notified the IB of the incompatibility of PCT Rule 49ter.1 with its national law - if it is one of the Offices of the States or intergovernmental organization which has notified the IB of such incompatibility3 it does not have to accept that decision;

(b) for all other designated Offices, it will depend on the criterion/criteria for restoration used by the receiving Office:

  • any right of priority which has been restored using the "in spite of due care" criterion is effective, subject to PCT Rule 49ter.1(c) and (d), in all such designated Offices;
  • any right of priority which has been restored using the "unintentional" criterion is effective, subject to PCT Rule 49ter.1(c) and (d), in all such designated Offices which, under their applicable national law, apply that criterion or a criterion which, from the viewpoint of the applicant, is more favorable.
(2) Where the request for restoration of the right of priority has been refused by the receiving Office:

No designated State is bound by the decision of the receiving Office; any designated Office may consider the request for restoration submitted to the receiving Office to be a request for restoration submitted to it as designated Office under PCT Rule 49ter.2(a). It is recalled that even if the receiving Office refused to restore the right of priority, the priority claim will not be considered void during the international phase (see PCT Rule 26bis.2(c)(iii)).

(B) Request for the restoration of the right of priority during the national phase

Rule 49ter.2 "Restoration of Right of Priority by Designated Office"

According to PCT Rule 49ter.2, where the international application claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the designated Office will, on the request of the applicant, restore the right of priority if the Office finds that a criterion for restoration applied by it is satisfied. You may want to request the restoration of the right of priority in the national phase, rather than in the international phase, in the following situations:

  • if the receiving Office was one of those which have declared that PCT Rule 26bis.3 is incompatible with its national law, and the international application was not transmitted to the IB as receiving Office under PCT Rule 19.4;
  • if the receiving Office refused the request for restoration; or
  • if you simply did not request the restoration of the right of priority during the international phase.

If you request the restoration of the priority right before the designated Office, there are several conditions which must be met and actions that must be taken, as described below:

(1) The international application must be filed on or after 1 April 2007, or, if the international application was filed before 1 April 2007, the acts referred to in PCT Article 22(1) must be performed on or after 1 April 2007.

(2) The request for restoration must be filed within a time limit of one month from the applicable time limit under PCT Article 22. As was indicated above, even where the receiving Office has refused to restore the right of priority, the priority claim remains in the application and time limits will be calculated from the filing date of the priority claim which has not been restored, including the time limit under PCT Article 22.

(3) That request should state the reasons for the failure to file the international application within the priority period and, where applicable before the designated Office concerned2, be accompanied by any declaration or other evidence required and a fee.

(4) The designated Office will restore the right of priority if it finds that the criterion for restoration applied by it2 is satisfied.

(5) It may not be possible to restore the right of priority before a designated Office if it is the Office of one of the States or intergovernmental organization which has notified the IB of the incompatibility of PCT Rule 49ter.2 with its national law3.

A table showing information furnished to the IB by receiving Offices and designated Offices on the criterion/criteria applied by them, and on whether a fee is payable and/or whether other evidence is required in support of the request for restoration is under preparation and will be published shortly on the PCT Resources page of PatentScope. Information on the criteria applied by, and the requirements of the Offices will also be published shortly in the PCT Applicant's Guide, Annex C, and will be notified in the PCT Newsletter and the Official Notices (PCT Gazette) as and when the IB is notified of those requirements or of any changes to them.

Footnotes to practical advice:

1. The Offices of the following States and intergovernmental organization have notified the IB of the incompatibility of PCT Rule 26bis.3 with the national law applied by them: Algeria, Belgium, Brazil, Colombia, Cuba, Czech Republic, European Patent Office, France, Germany, Greece, Hungary, India, Indonesia, Italy, Japan, Norway, Philippines, Portugal, Republic of Korea, Singapore, Spain (situation on 1 April 2007).

2. See last paragraph for further information.

3. The Offices of the following States and intergovernmental organization have notified the IB of the incompatibility of PCT Rule 49ter.1 and 2 with the national law applied by them: Algeria, Brazil, Canada, China, Colombia, Cuba, Czech Republic, European Patent Office, Germany, Hungary, India, Indonesia, Japan, Lithuania, Mexico, Norway, Philippines, Portugal, Republic of Korea, Singapore, Spain, Sweden, Turkey, United States of America (situation on 1 April 2007).