PCT Receiving Office Guidelines

Chapter VII: Priority Claims and Priority Documents

Restoration of the Right of Priority

166A. The receiving Office should restore the right of priority if the applicant requests restoration within two months from the expiration of the priority period and satisfies the criteria applied by the Office and the requirements under Rule 26bis.3.

166B. 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 and the applicant requests restoration under the criterion not applied by the Office.

166C. Receipt of a Request for the Restoration of the Right of Priority. The applicant may request restoration of the right of priority directly on the request form (Box No. VI) or by filing a separate request within the time limit provided in Rule 26bis.3(e). The receiving Office checks whether the request form contains a request by the applicant to restore the right of priority in Box No. VI. If the receiving Office receives a separate restoration request, the Office promptly notifies the International Bureau of it. The receiving Office transmits a copy of all documents received from the applicant (including a copy of the restoration request, the statement of reasons, any declaration or other evidence) to the International Bureau, unless it finds that any such document contains information meeting the criteria of Rule 26bis.3(h-bis) (see paragraphs 166N to 166Q below) (item 6 of Form PCT/RO/118).

166D. Time Limit under Rule 26bis.3(e). The applicant is required to file the restoration request, submit a statement of reasons for the failure to file the international application within the priority period, claim priority of an earlier application in the international application and pay any fees required for requesting restoration within 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), all of these requirements must be complied with before the technical preparations for international publication have been completed.

166E. Checking of Formal Requirements. Upon receipt of a request to restore the right of priority, the receiving Office promptly checks whether the following requirements are met:

(a) the international filing date of the international application is later than the date on which the priority period expired but within two months from that date (Rule 26bis.3(a));

(b) a priority claim to an earlier application is made in the international application or is subsequently added pursuant to Rule 26bis.1(a) within the applicable time limit under Rule 26bis.3(e);

(c) the request to restore the right of priority, stating the reasons for failure to file the international application within the priority period, has been submitted within the applicable time limit under Rule 26bis.3(e) (for the statement, see also paragraph 166F below); and

(d) the fee for requesting restoration, if applicable, has been paid (Rule 26bis.3(d)) within the applicable time limit under Rule 26bis.3(e). The time limit for payment of the fee may be extended, at the option of the receiving Office, for a period of up to two months from the expiration of that time limit (Rule 26bis.3(d)).

If any of the above requirements are not complied with, and the applicable time limit has not yet expired, the receiving Office promptly invites the applicant (for example by way of Form PCT/RO/132) to comply with that requirement within the applicable time limit.

166F. Statement of Reasons. Under Rule 26bis.3(b)(ii), the applicant is required to explain why he failed to file the international application within the priority period. For the "due care" criterion, the statement should describe in detail the facts and circumstances that led to the late filing and any remedial or alternative steps taken to attempt a timely filing of the international application. For the "unintentionality" criterion, a statement indicating that the failure to comply with the priority period was not deliberate may be sufficient. If the receiving Office finds the statement of reasons insufficient to determine whether the applicant satisfies the applicable criteria, the receiving Office may invite the applicant to submit further information by way of a revised statement within a reasonable time limit (item 5 of Form PCT/RO/158). The receiving Office explains in detail, by text in the Annex to that Form, why it finds the statement insufficient. In this notification, the receiving Office may also require the applicant to submit a declaration or other evidence in support of the statement of reasons (see paragraph 166G). If the applicant does not respond to that notification within the time limit, the receiving Office proceeds as outlined in paragraph 166S. If the applicant submits new arguments in response to that notification and the receiving Office decides to restore the right of priority, the Office proceeds as outlined in paragraph 166S. If the applicant submits new arguments in response to that notification and the receiving Office nevertheless intends to wholly or partially refuse the request to restore the right of priority, the receiving Office proceeds as outlined in paragraph 166R.

166G. Declaration and Evidence. Under Rule 26bis.3(f), the receiving Office may require the applicant to submit a declaration or other evidence in support of the statement of reasons or, if some evidence has already been provided, to submit additional evidence within a reasonable time limit (items 3 and 4 of Form PCT/RO/158). While for the "unintentionality" criterion, a statement indicating that the failure to comply with the priority period was not deliberate may be sufficient, the receiving Office may, nevertheless, require that this statement be submitted in the form of a declaration, and may require that the statement provides the reasons for the failure, supported by evidence if necessary. For the "due care" criterion, the receiving Office may require that the statement of reasons is substantiated with a declaration or other evidence.

166H. Criteria Applied by the Receiving Office. The receiving Office, when deciding on a request for restoration, is free to apply either the generally more strict criterion of "due care" (Rule 26bis.3(a)(i)) or the generally less strict criterion of "unintentionality" (Rule 26bis.3(a)(ii)). The receiving Office may also apply both criteria. In such a case, since a positive finding of "due care" generally encompasses a finding of "unintentional" conduct, the receiving Office should, unless the applicant requests otherwise, first apply the "due care" criterion, and only if this standard has not been complied with, apply the "unintentionality" criterion.

166I. Unintentionality Criterion. Under Rule 26bis.3(a)(ii), the receiving Office should restore the right of priority if it finds that the failure to file the international application within the priority period was "unintentional". The applicant satisfies this criterion if he demonstrates that he did not deliberately refrain from filing the international application within the priority period and that he had a continuing underlying intention to file the international application within the priority period. The receiving Office should focus on the applicant's intent at the time when the priority period expired, irrespective of any changes in the applicant's intent before or after the expiration of the priority period.

166J. Due Care Criterion. Under Rule 26bis.3(a)(i), the receiving Office should restore the right of priority if it finds that the failure to file the international application within the priority period occurred in spite of "due care" required by the circumstances having been taken. Generally, the standard of having exercised "due care" within the meaning of Rule 26bis.3(a)(i) can only be met if the applicant has taken all measures which a reasonably prudent applicant would have taken. In determining whether the applicant exercised the "due care" of a reasonably prudent person, the receiving Office considers the facts and circumstances of each particular case. It is not sufficient for an applicant to demonstrate that, in general, he has taken all precautions to adhere to time limits for filing international applications. Instead, the applicant must show that he exercised all "due care" for the particular application in question. The receiving Office should engage in a factual analysis of the applicant's specific acts related to the filing of the international application up to the expiration of the priority period. Actions by the applicant after the expiration of the priority period should not be considered when determining whether the applicant exhibited "due care".

166K. Where the applicant is represented by an agent, both the applicant and the agent must show that they exercised "due care" in order to satisfy the "due care" criterion (see Rule 90.3(a)). For an applicant, the appointment of a qualified representative, under normal circumstances, would generally be sufficient to satisfy the criterion of "due care". In particular cases, however, the applicant may be required to demonstrate prudent action in the selection of a qualified agent.

166L. For a corporate applicant or agent to satisfy the "due care" criterion, the applicant or agent generally must demonstrate that a reliable docketing, back-up and reminder system has been established, that reliable, adequately trained and supervised staff have used this system and have not made mistakes of this nature in the past, and that the failure to file within the priority period in this particular case was an isolated incident. While the same standard cannot be expected from a small applicant or agent, such as an individual inventor or a small or medium-sized enterprise, any applicant or agent is expected to set up an efficient and reliable reminder, supervision and back-up system which corresponds to best practices in the field.

166M. While each receiving Office must engage in its own case-by-case analysis for each restoration request, the application of the "due care" criterion to the following factual circumstances (based on the experience of the International Bureau) may be of assistance:

(a) Lack of Knowledge by the Applicant

A prudent applicant acquires the requisite knowledge of the PCT system in order to be able to timely file a complete international application, and/or appoints a competent agent to file on his behalf if the applicant lacks the requisite knowledge. An applicant who failed to file the international application within the priority period due to a lack of knowledge concerning the operation of the PCT system or concerning the 12 months priority period as set out in Article 4C of the Paris Convention generally did not act with "due care".

(b) Lack of Financing by the Applicant

A prudent applicant ensures sufficient financial means in order to timely file an international application. An applicant who failed to file the international application within the priority period due to financial constraints generally did not act with "due care".

(c) Human Error by the Applicant or Agent Himself

A reasonably prudent applicant or agent recognizes the importance of meeting crucial priority deadlines and ensures that all aspects of the preparation and filing of the international application are carried out with the diligence and meticulousness needed to successfully and timely submit the international application. A human error attributable to increased workload, lost files and incompletely filed international applications is, in general, evidence of lack of "due care".

(d) Miscommunication between the Applicant and the Agent

Where the applicant appoints an agent, both the applicant and the agent must act with "due care" in their communication with each other. A prudent applicant instructs the agent in a clear and timely manner to file the international application. A prudent agent acts upon instructions received from the applicant and clarifies with the applicant in case of doubt. A prudent agent advises the applicant of all important matters in relation to the timely filing of an international application and the consequences of a late filing in a clear manner. A prudent applicant or agent finds alternative ways to communicate with the other person if the usual communication channels fail. Where the failure to timely file an international application was caused by technical difficulties (e.g. unexpected email delivery failure between the applicant and the agent), both the applicant and the agent may have acted with "due care" if they can demonstrate that the system had worked reliably in the past and that the breakdown could not have been anticipated by either party.

(e) Absence from the Office by the Applicant or Agent

Where an applicant or agent is absent from the office at the expiration of the priority period, a prudent applicant or agent either files the international application in advance insofar as the absence was predictable, or instructs another person to timely file the international application during his absence. For example, a prudent applicant with a scheduled absence from the office due to vacation or a medical appointment checks whether the priority period for the filing of an international application expires during this absence and instructs an agent, a colleague or a staff member to file the international application on his behalf. In addition, a prudent agent/applicant maintains a reliable communication system that provides other persons in the office with access to important communications so that other persons can receive and react upon filing instructions in case of unplanned absences. For example, a prudent agent ensures that instructions to file an international application are sent to an email account to which several persons have access. An applicant or agent generally fails to demonstrate "due care" if he failed to timely file an international application due to illness or vacation. It is only in cases where the applicant or agent fell unexpectedly ill and needed urgent treatment that prohibited all communication with other persons that the failure to timely file an international application may have occurred in spite of "due care".

(f) Human Error by the Agent's or Applicant's Staff

An applicant or agent may entrust administrative staff (non-attorneys such as assistants or paralegals) with the performance of certain administrative tasks. A prudent applicant or agent carefully chooses, trains and monitors the work of a reliable, experienced, adequately trained and supervised employee. A human error by an assistant in the docketing, monitoring, preparation or filing of the international application is not attributed to the applicant or agent if the applicant or agent can show that "due care" was exercised in the management of the assistant and the failure to file within the priority period in this particular case was an isolated human error. In the statement of reasons, the applicant or agent should usually outline the number of years the assistant has been entrusted with the particular task, the level of training and supervision provided to the assistant and whether the assistant has performed all his duties diligently in the past.

(g) Docketing System Error

Docketing system errors can be divided into human entry errors (see paragraphs (c) and (f) above) and technical errors (e.g. software malfunction or server crashes). Where the applicant or agent failed to timely file the international application due to a technical error, the applicant or agent may have acted with all "due care" if he demonstrates that he set up a reliable and well-functioning reminder system, had sufficient knowledge of the use and operation of the system, sufficiently trained and supervised staff on the use of the system, arranged reliable back-up and entry review (a second person that independently checks the correct entry of dates) procedures, and that the technical error occurred unexpectedly and was as such not foreseeable.

(h) Facsimile or Software Submission Failure

Where an applicant or agent fails to timely file an international application due to a transmission error using facsimile, or any filing software, an applicant or agent has to show that the error occurred due to an external technical problem that was beyond the applicant's/agent's control in order to satisfy the "due care" criterion (for facsimile submissions, see also Rule 92.4(c) which puts the risk of an unsuccessful transmission on the side of the applicant). A prudent applicant or agent takes particular care and vigilance when he files an international application on the last day or even during the last hours of the priority period. This includes the preparation of the necessary facilities for the filing of the international application reasonably in advance of the expiration of the priority period, such as where the applicant or agent chooses to file electronically, a well-functioning computer system, the installation of the latest filing software and the digital certificate, a reliable Internet connection and sufficient knowledge of the software used and where the applicant or agent chooses to file via facsimile, a well-functioning fax machine. Where a prudent applicant or agent experiences technical problems during the submission of an international application, the applicant or agent exhausts all reasonable alternative means to timely file the international application (such as hand delivery, express mail, submission via fax instead of electronic filing, use of a different fax machine, submission to a different fax number within the same receiving Office, filing with another receiving Office in a different time zone which is competent for the main applicant).

(i) Postal Service Difficulties

Where an applicant fails to timely file an international application due to postal service errors, the receiving Office should apply the underlying idea of Rule 82.1 when evaluating whether an applicant or agent acted with all "due care" required by the circumstances. A prudent applicant or agent mails an international application to the receiving Office at least five days prior to the expiration of the priority period by registered airmail (applicants or agents need not use airmail if surface mail normally arrives within two days of mailing or if airmail is unavailable). The applicant or agent may have acted with all "due care" if the filing of the international application would have been timely under normal circumstances and the postal delay was unforeseeable.

(j) Force Majeure

An event of force majeure means external, unforeseeable and/or unavoidable circumstances beyond the control of the applicant or agent. Disasters, such as hurricanes, volcanic eruptions, earthquakes, international conflicts and war may be considered as such events (see for example Rule 82quater.1(a)). Generally, if such circumstances make it impossible for an applicant or agent to file the international application within the priority period, the failure to file the application occurs in spite of "due care". An applicant or agent generally acted with all "due care" if the applicant or agent demonstrates that the consequences of the event could not have been predicted and/or avoided.

166N. Documents or Parts Thereof Meeting the Criteria of Rule 26bis.3(h-bis). In general, the receiving Office must transmit all documents received from the applicant relating to a restoration request to the International Bureau (Rule 26bis.3(h)(iv)). However, exceptionally, if the receiving Office finds, either on its own or upon a reasoned request by the applicant, that a document or part thereof meets the requirements of Rule 26bis.3(h-bis), that document or part thereof should not to be transmitted to the International Bureau. A document or part thereof does not "obviously serve the purpose of informing the public about the international application" if it is clearly irrelevant for the disclosure or assessment of the international application as such. A disclosure of a document or part thereof would "clearly prejudice the personal or economic interests of any person" if its disclosure to the public would be harmful to the specific and concrete personal or economic interests of that person. A mere abstract prejudice to hypothetical personal or economic interests would generally not be sufficient. Consequently, for example, a document or part thereof which is clearly not relevant for the international application but which does not cause any harm to any person should nevertheless be transmitted to the International Bureau. Finally, the receiving Office must weigh the different interests involved and only when it finds that, in a particular case, the interest of the affected person to keep the document or part thereof confidential outweighs the public interest to disclose that document or part thereof, the receiving Office should not transmit it to the International Bureau.

166O. Each case must be considered separately as to whether it meets the requirements of Rule 26bis.3(h-bis). Examples of information which might qualify under the Rule could be private details of persons involved in the late filing of the international application, such as the name of the paralegal; medical certificates stating the nature of the illness; and information in relation to other national or international applications or other intellectual property rights unrelated to the international application in question.

166P. The receiving Office may, instead of deciding on its own not to transmit a document or part thereof to the International Bureau, notify the applicant that it finds that a document or part thereof meets the requirements of Rule 26bis.3(h-bis), invite the applicant to submit a reasoned request to the receiving Office not to transmit a certain document or part thereof to the International Bureau, and, where applicable, to submit (a) replacement sheet(s) from which the relevant part is removed (Form PCT/RO/132).

166Q. Depending on the case, the receiving Office may either not transmit the entire document or only the relevant part to the International Bureau. The procedure to be applied is set out in detail in Section 315.

166R. Intended Refusal of the Request to Restore the Right of Priority. If the receiving Office intends to wholly or partially refuse the request to restore the right of priority (Rule 26bis.3(g)), the Office notifies the applicant of the intended refusal and allows the applicant to make observations within a reasonable time limit (Form PCT/RO/158). In this notification, the receiving Office may also invite the applicant to submit a declaration or other evidence (see paragraph 166G). The receiving Office should explain in detail, by text in the Annex to that Form, why it intends to wholly or partially refuse the restoration request. If the receiving Office applies both the "due care" and the "unintentionality" 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 indicates the intent to partially refuse restoration of priority under the "due care" criterion, and explains that the right of priority will nevertheless be restored under the "unintentionality" criterion, by text in the Annex to Form PCT/RO/158.

166S. Decision and Notification to the Applicant. As soon as the receiving Office decides to restore the right of priority or, after notifying the applicant of the intended refusal (see paragraph 166R), decides to wholly or partially refuse the request to restore the right of priority, the Office promptly notifies the applicant of its decision (Form PCT/RO/159). In this notification, the receiving Office indicates whether the Office restores the right of priority or wholly or partially refuses the request to restore the right of priority and the criterion for restoration upon which the decision was based. In the Annex to the Form, the receiving Office summarizes the facts and the reasons for its decision. If the receiving Office decides not to transmit a document or part thereof to the International Bureau under Rule 26bis.3(h-bis), it also notifies the applicant of this decision (relevant box in Form PCT/RO/159) and specifies the document or part thereof in the relevant box in Form PCT/RO/159, without disclosing the actual sensitive information which is not transmitted to the International Bureau. If the receiving Office receives a request under Rule 26bis.3(h-bis) from the applicant not to transmit a document or part thereof to the International Bureau, but nevertheless decides to transmit that document or part thereof to the International Bureau, it also notifies the applicant of this decision (relevant box in Form PCT/RO/159).

166T. Notification of the International Bureau. The receiving Office promptly submits a copy of its decision (Form PCT/RO/159) to the International Bureau, along with a copy of any correspondence between the Office and the applicant not previously submitted (including the restoration request itself if it was not contained in the request form, any statement of reasons, any declaration or other evidence, Form PCT/RO/132, Form PCT/RO/158, etc.), unless the Office finds that this document contains information meeting the criteria of Rule 26bis.3(h-bis) (see paragraphs 166N to 166Q above).