2.3.5 Claim to priority
2.3.5.3 Restoration of priority
The provisions for restoration of priority right (see A‑III, 6.6) also exist under the PCT (Rules 26bis.3 PCT and Rule 49ter PCT). Under the PCT, restoration of the right of priority can be made either in the international phase before the receiving Office (Rule 26bis.3 PCT) or upon entry into the European phase before the EPO as designated or elected Office (Rule 49ter.2(b)(i) PCT).
The EPO only applies the "due care" criterion in accordance with its practice under Art. 122 (Rules 26bis.3(a)(i) PCT and Rule 49ter.2(a)(i) PCT; see also E‑VIII, 3.2 and the notice from the EPO dated 7 November 2007, OJ EPO 2007, 692). As a consequence, any request for restoration of priority rights granted by a receiving Office under the "unintentional" criterion does not have any effect before the EPO as designated/elected Office (Rule 49ter.1(b) PCT).
As set out hereafter, if the applicant has already filed a request for restoration of priority with the receiving Office, a (new) request need not always be filed upon entry into the European phase.
If the priority right was restored by the receiving Office under the "due care criterion", no new request need be filed with the EPO as designated/elected Office, since the EPO will, in principle, recognise the decision of the receiving Office. If, however, the EPO has reasonable doubt that the requirements for grant were met, it will notify the applicant accordingly. In this communication the reasons for such doubt will be indicated and a time limit will be set within which the applicant may submit comments.
Consequently, if the applicant wants the priority claim to be valid in the procedure before the EPO as designated/elected Office, a request for restoration must always be filed if, in the procedure before the receiving Office:
– no request for restoration of priority right was filed;
– a request for restoration of priority right was rejected;
– a request for restoration of priority right was granted under the "unintentional criterion".
The EPO as designated/elected Office will grant a request for restoration of priority right only if the following requirements are met:
(i)the filing date is within two months of the date of expiry of the priority period;
(ii)the failure to claim the right of priority within the priority period occurred in spite of due care required by the circumstances having been taken;
(iii)a request for restoration of priority is filed within one month from the date on which the 31-month time limit for entry into the European phase expired or from the effective date of early entry into the European phase (see E‑IX, 2.8); where the application is deemed withdrawn under Rule 160(1) for failure to comply with a requirement under Rule 159(1), the request for restoration of priority may still be filed together with a timely request for further processing in respect of the 31-month time limit under Rule 159(1) or, failing this, with a timely request for re-establishment of rights in respect of the period for requesting further processing;
(iv)the fee for restoration of priority (Art. 2(1), item 13, RFees) is duly paid within the time limit mentioned under point (iii); the further considerations made under point (iii) also apply to this fee;
(v)the request is accompanied by a statement of reasons for the failure to file the international application within the priority period and is preferably accompanied by any declaration or other evidence in support of the statement of reasons.
Rule 49ter PCT
Art. 122
PCT Newsletter
9/2015, 10