3.2.5 Restoration of the right of priority (R. 49ter PCT)

In order to reflect the provisions of Art. 13(2) of the Patent Law Treaty (PLT) 2000 and of R. 14(4) and (5) of the Regulations of the PLT 2000, the possibility of requesting restoration of the priority right was introduced into the PCT (R. 49ter.2 PCT) and the possibility of requesting re-establishment of the priority right was introduced into the EPC (Art. 122 and R. 136 EPC) for applicants who failed to comply with the priority period.

The Legal Board held in J 13/16 that the remedy in R. 49ter.2 PCT was directly applicable to Euro-PCT applications in proceedings before the EPO acting as designated Office. If, in the international phase, a receiving Office had restored a right of priority under the "unintentional" criterion of R. 26bis.3(a)(ii) PCT, the restoration was not effective in proceedings before the EPO acting as designated Office, since the EPO applied only the "due care" criterion (R. 49ter.1(b) PCT). In such cases, within the period specified in R. 49ter.2(b)(i) PCT, the applicant had to file a (new) request for restoration of a right of priority under R. 49ter.2 PCT with the EPO acting as designated Office. For the purposes of R. 49ter.2 PCT, the request filed with the receiving Office under R. 26bis.3(b) PCT could not be taken into account in the proceedings before the EPO acting as designated Office. See also J 17/16, J 10/17, J 8/18, J 1/19, J 8/21, J 14/21.

A request for restoration of the right of priority as specified in R. 49ter.2 PCT is deemed not to have been filed if the applicable fee has not been paid within the relevant time limit (J 8/18, J 1/19).

In J 14/21 the Legal Board referred to the Understanding adopted by the Assembly of the PCT Union (see PCT/A/34/6, Annex IV, point 8) which stated that "where ... the designated Office reinstates the rights of the applicant … in accordance with R. 49.6 or 76.5(ii) … such reinstatement will extend to ... the time limit under R. 49ter.2(b)(i)" and held that this PCT Understanding had to be taken into account when interpreting R. 49ter.2(b)(i) PCT, as it expressed the intention of the PCT legislator as an act of authentic interpretation (Art. 31 VCLT). In the case in hand, the Legal Board found that the request for restoration of the right of priority by the designated Office, which had been filed on the same day as the timely request for further processing in respect of the 31-month period under R. 159(1) EPC, had been made in time. Furthermore, further processing and re-establishment of rights were excluded in respect of the time limit for requesting restoration of the right of priority before the designated Office, because a request for restoration of rights as specified in Rule 49ter.2 PCT was equivalent to, and identical in legal nature, to a request for re-establishment of rights under the EPC (J 13/16, J 8/18) (see chapter VI.3.2.1).

In accordance with its practice under Art. 122 EPC, the EPO applies the "due care" criterion for the purposes of R. 49ter.2(a) PCT (for recent decisions, see J 8/21, J 14/21). According to established case law, due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system. The party requesting re-establishment of rights bears the burden of proving that these requirements are met (see chapter III.E.5.2).