Practical Advice
Request for restoration of the right of priority due to reasons of financial hardship
Q: I am a patent agent and, because of financial difficulties caused by a difficult personal situation, my client instructed me to file a PCT application one week after the expiration of the priority period. When entering the priority claim in the request form in ePCT, the filing system indicated that the right to claim priority is eligible for restoration. How can I request restoration of the priority right and what are the chances that the right of priority would be restored in this case?
A: Restoration of the right of priority may be requested in the international phase before the receiving Office or in the national phase before each designated Office. In the international phase, the request may be made either in Box No. VI of the request form (PCT/RO/101) or by submitting a separate letter to the receiving Office within the applicable time limit under PCT Rule 26bis.3(e), usually two months from the expiration of the priority period.
When requesting restoration of the right of priority before the receiving Office, applicants must provide a “statement of reasons” explaining why they failed to file the international application within the priority period (PCT Rule 26bis.3(b)(ii)), bearing in mind the criterion they seek to satisfy. This can be either the criterion of having exercised “due care” within the meaning of PCT Rule 26bis.3(a)(i) or the less stringent criterion of “unintentionality” within the meaning of PCT Rule 26bis.3(a)(ii).
The “due care” criterion can only be met if the applicant has taken all the measures that a reasonably prudent applicant would have taken in the given circumstances. In contrast, the criterion of “unintentionality” is generally met if the applicant did not deliberately refrain from filing the international application within the priority period.
In all cases, it is important to note that the receiving Office only considers the facts and circumstances up to the end of the priority period. Any decision taken or situation arising after the expiration of the priority period is not taken into account. When the priority period expired, if the applicant had consciously decided not to file the international application but to postpone the filing until after expiration of the priority period, it would not be possible to meet the criterion of unintentionality, and logically the criterion of due care could not be met either.
In the case you described, the financial difficulties undoubtedly placed your client in a challenging situation. However, the receiving Office will not take into account the reasons which led to the financial difficulties and will only look into the reasons which directly led to the missing of the priority deadline. Where the applicant made a deliberate choice not to file within the priority deadline, he/she would not be able to establish that the missing of the deadline was unintentional and hence the criterion of unintentionality within the meaning of Rule 26bis.3(a)(ii) cannot be satisfied. As the unintentionality criterion is not met, the stricter “due care” criterion under Rule 26bis.3(a)(i) cannot be fulfilled either. With regard to any temporary financial difficulties, please note that the payment of all fees is not necessary to get an international filing date and they can be paid within one month from the date of receipt of the international application at the receiving Office without any surcharge (PCT Rules 14.1(c), 15.3 and 16.1(f)).
Generally, when a receiving Office finds that any restoration criterion it applies is not met, it issues Form PCT/RO/158 (Notification of Intended Refusal of Request to Restore Right of Priority and/or Invitation to Furnish Declaration or Other Evidence) to inform the applicant of its intended refusal and gives the applicant the opportunity to provide any observations within a further time limit set by the Office. Only after the expiration of this time limit will the receiving Office make its final determination and notify the applicant with Form PCT/RO/159 (Notification of Decision on Request to Restore Priority).
Each receiving Office engages in its own case-by-case analysis and the PCT Receiving Office Guidelines have set out general guidance for it to follow when dealing with such requests, together with some typical scenarios and considerations, which may be consulted at:
www.wipo.int/pct/en/texts/ro/ro166a_166t.html#_166m
You should note that some receiving Offices have informed the International Bureau under PCT Rule 26bis.3(j) that the provisions regarding restoration of right of priority are incompatible with their respective national laws, in which case restoration of the right of priority is not possible before them. For a list of these Offices where an incompatibility provision is in force, please refer to the table entitled “PCT Reservations, Declarations, Notifications and Incompatibilities”.
Additional details about meeting the criterion of having exercised “due care” within the meaning of PCT Rule 26bis.3(a)(i) can be found in PCT Newsletter No. 02/2020 at:
https://www.wipo.int/edocs/pctndocs/en/2020/pct_news_2020_2.pdf
It should be further noted that the above only discusses the processing of such requests by the receiving Office in the international phase. As mentioned earlier, the applicant also has an opportunity to request restoration of the priority right in the national phase before each designated Office. More details on how to make a request for restoration of the right of priority and its processing can be found in the Practical Advice of PCT Newsletter No. 09/2015.