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.
Requesting the addition of a missing priority claim
Q: On 15 January 2019, I filed an international application in which I intended to claim the priority of two earlier applications (dated 5 and 19 February 2018, respectively). However, the details about the earlier of the two applications were unfortunately omitted from the request. Is it possible to add the missing priority claim, and if so, what is the applicable time limit for doing so and how do I make such a request?
A: You can request the addition of a priority claim after filing, provided that the request is made within the time limit provided for in PCT Rule 26bis.1(a), which states:
“The applicant may correct a priority claim or add a priority claim … within a time limit of 16 months from the priority date or, where the correction or addition 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…”
In your case, since the priority claim which is to be added to the request (5 February 2018) is earlier than the priority claim which was already included in the request (19 February 2018), your request to add the missing claim must reach the receiving Office or the International Bureau (IB) prior to the expiration of 16 months from 5 February 2018, the earlier of the two claims (that is, by 5 June 2019). (The alternative time limit under PCT Rule 26bis.1(a) of four months from the international filing date does not need to be considered in this particular case as it is less favorable, falling on 15 May 2019.)
You have the choice to submit your request to add a missing priority claim to either the receiving Office (in particular, if the earlier application was filed with the receiving Office and you also intend to request that Office to furnish a copy of the corresponding priority document to the IB) or the IB. Please note, however, that in cases where the international application is scheduled to be published soon, it is preferable to send it directly to the IB. The request to add the missing priority claim must be signed by an authorized person, that is, by the agent or the common representative. There is no fee payable for making such a request.
If you have access to your international application in ePCT, you are advised to make use of the “Upload document” feature to upload your request, in order to ensure rapid receipt by the IB (or receiving Office, if it accepts documents via ePCT). If you do not yet have access to your application in ePCT but you do already have a WIPO account, you can nevertheless sign in to ePCT (https://pct.wipo.int) and use the “Upload document” function to submit your request to the IB. To benefit from the full set of functionality available in ePCT, it is recommended to sign in to ePCT with your WIPO account and follow the link to set up strong authentication which is required for secure online access in order to file and manage your applications securely.
Further information on setting up an account and making use of ePCT’s facilities is available in the FAQs of the PCT eServices Help page at:
www.wipo.int/pct/en/epct/support.html
If you do not yet have a WIPO account to use ePCT and you need to submit your request to the IB urgently because the applicable time limit is about to expire, you can, in that case, also use the PCT contingency upload service at the IB at:
https://pct.wipo.int/ePCTExternal/pages/UploadDocument.xhtml
For further information, see PCT Newsletter No. 12/2018, page 1. It is highly recommended, however, if you are going to submit documents regularly to the IB, that you create a WIPO account, as this will be quicker and simpler.
Note that where the addition (or correction) of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date and which has not already expired will be computed from the priority date as so changed (PCT Rule 26bis.1(c)). In your case, if you request the addition of the earlier priority claim, your priority date would change from 19 February 2018 to 5 February 2018. This means that a number of time limits under the PCT would also change accordingly. For example, your earliest potential date for international publication, as well as the time limit for entry into the national phase, would be two weeks earlier.
If you have not furnished a certified copy of the earlier application (the priority document) in relation to the missing priority claim, nor requested the receiving Office to do so if the 5 February application was filed with that Office, you should contact the competent authority in this respect to ensure that the priority document is furnished within the newly calculated time limit under PCT Rule 171. If the earlier application was filed with an Office which acts as a depositing Office of the WIPO Digital Access Service for Priority Documents (DAS), you could also request the Office of first filing to include your earlier application in DAS and then request the IB, prior to the date of international publication, to obtain the priority document from DAS (PCT Rule 17.1(b) and (b-bis)).
If you fail to meet the time limit under PCT Rule 26bis.1 for adding the priority claim, you may, prior to the expiration of 30 months from the priority date, and subject to the payment of a special fee, request the IB to publish information concerning this (PCT Rule 26bis.2(e)). 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”. This will not add the priority claim to your application, but it may help you if you wish to add the priority claim with any designated (or elected) Offices in the national (or regional) phase (if this is permitted under the applicable national (or regional) law).
For information on the extent to which the priority claim will be checked in the international phase, please refer to the “Practical Advice” in PCT Newsletter No. 01/2019.
- The priority document must be submitted by the applicant to the IB or the receiving Office not later than 16 months from the (earliest) priority date, although any priority document which is received by the IB after the expiration of that time limit will be considered to have been received by it on the last day of that time limit if it reaches it before the date of international publication of the international application (see PCT Rule 17.1(a)).