International:

Can You Save Your Priority Date If the PCT Filing Deadline Has Passed?

By Phillip M. Pippenger - March 25, 2015

Many applicants are aware that a patent application filed in one country may claim priority to an earlier filed patent application in another country as long as certain rules are followed.

One important rule is the one year rule, i.e., that the child application must typically be filed within a year of the filing date or priority date of the earlier application.

In cases where it is desired to wait for more than a year before investing in national stage applications abroad, the Patent Cooperation Treaty (PCT) system provides a convenient mechanism to preserve foreign patent rights, but only if the PCT application is filed within the allowed year. What happens if the PCT filing is mistakenly delayed until after the one year has passed? In theory, the right to claim the original priority date in foreign filings has been forfeited. The loss of priority can result in an inability to patent the subject matter abroad due to intervening prior art.

However, the PCT rules do provide a little known recovery route for the applicant who has missed the one year PCT filing deadline. In particular, the PCT regulations were amended in 2007to allow applicants who miss the 12 month priority period to request that the right of priority be restored. (Rule 26bis.3, Rule 49ter.2)This rule requires that the application and petition to restore priority be filed within two months of the expiration of the priority period. The standard used to decide such petitions is “in spite of due care” or “unintentional.”

Thus, for example, suppose an applicant realizes in month 13 (one month too late), that they have inadvertently failed to file the PCT application. This applicant may request, and likely receive, a restoration of the right of priority in the international stage. It is worth noting that the failure to file within the priority period must have been unintentional (or in spite of due care) and the application must be filed no later than 14 months after the priority date (2 months late).

Another important caveat that the applicant should be aware of is that PCT countries need not follow every PCT rule. That is, a countrymay file an exception to a PCT rule if the rule is incompatible with the country’s own rules and laws. With respect to the restoration of priority under Rule 26bis.3, more than 90% of PCT member countries honor the rule allowing restoration when they are a designated country. Certain otherscountries honor the rule if they are the receiving office (e.g., Canada, China and Mexico) but not if they are only a designated country.

In short, when a PCT one year filing date has been recently missed, there is still a route availablein most cases to avoid forfeiture of the priority date. The professionals at Miller, Matthias & Hull LLP strive to remain abreast of this and other issues and trends in IP law so that we can effectively advocate for our clients. If you would like to learn more about how we can help with your IP needs, please contact us at (312)977-9902.