Introduction

In general, an international application cannot claim priority to a previously filed U.S. application (provisional or non-provisional) unless the international application is filed within a year of the filing date of the U.S. application (i.e., the priority period). Recent amendments to the Patent Cooperation Treaty (PCT) rules, however, provide an opportunity to restore priority for an international application (i.e., PCT application) filed outside the priority period, if the international application is filed within two months after expiration of the priority period and certain requirements are met. That is, the PCT rules have been amended to provide for the restoration of priority when an international application is filed up to two months after the end of the normal 12-month priority period. Formally, these amendments do not provide an extension of the priority period. However, they have the same practical effect, wherein the maximum “extension” allowed for the priority period is two months.

This advisory provides an overview of these amendments to the PCT rules and discusses the extent to which the United States and other PCT member countries have implemented these rules. In addition, this advisory sets forth a few of the practical effects of the implementation of these rules for U.S. applicants.

Background

Previously, if a PCT applicant did not file a PCT application within twelve months of the filing date of the application to which the PCT application claims priority, the PCT application would not be able to claim priority to the earlier filed application. However, recent amendments have been made to the PCT rules that would allow applicants to request that the right to claim priority be restored in applications that were filed within two months after the expiration of the priority period (i.e., twelve months) and meet certain requirements (e.g., the delay occurred in spite of due care and/or the delay was unintentional). The PCT rules that have been amended include Rule 26bis.3 and Rule 49ter, which are discussed in detail below.

In summary, the United States has implemented Rule 26bis.3 in 37 C.F.R. §1.452 and MPEP §1828.01, but it has taken a reservation to (i.e., is not currently implementing) Rule 49ter (see MPEP §1803) because it is incompatible with current U.S. law (see 35 U.S.C. §§119, 120 and 365). Accordingly, a PCT applicant can file a request with the US/RO to restore priority for a PCT application if the requirements of 37 C.F.R. §1.452(b) are met. However, if a PCT applicant files with the USPTO a national phase application for which priority was restored under Rule 26bis.3, the USPTO will not recognize the filing date of the priority application as the effective filing date. In addition, although applicants entering the national phase in the United States will not be able to claim priority to the priority application under Rule 49ter, the priority date will continue to govern all PCT time limits, such as the 30-month deadline for entry into national phase.

Implementation of PCT Rule 26bis.3

The U.S. has implemented PCT Rule 26bis.3 in 37 C.F.R. §1.452 and MPEP §1828.01, and set the criterion for restoration of the priority to be “unintentional.” In particular, 37 C.F.R. §1.452(b) requires that a request for restoration of the right of priority be filed within two months from the date of expiration of the priority period (i.e., 12 months following the filing date of the priority application). In addition, the request must be accompanied by (1) the requisite fee under 37 C.F.R. §1.17(t) (currently $1,410); (2) a notice under PCT Rule 26bis.1(a) adding the priority claim, if it is not contained in the international application; and (3) a statement that the delay in filing the international application within the priority period was unintentional. For example, if a PCT applicant files an international application with the US/RO 13 months after the filing date of the priority application, the PCT applicant can request the US/RO to restore the right of priority of the PCT application to the earlier filed priority application by filing a request for restoration of priority under 37 C.F.R. §1.452(a); the $1,410 fee; a notice under PCT Rule 26bis.1(a) adding the priority claim, if it is not contained in the international application; and a statement that the delay in filing the PCT application within the priority period was unintentional.

37 C.F.R. §1.452 and MPEP §1828.01 further note that the Director may require additional information, if there is a question whether the delay was unintentional. In addition, if the applicant makes a request for early publication under PCT Article 21(2)(b) and the technical preparations for international publication have been completed by the International Bureau before the items required to be submitted for the request for restoration are filed, the items will be considered as not having been submitted in time for publication.

Further, if an applicant intends to enter the national phase in a country that under Rule 49ter.2(a) requires the “in spite of due care” standard (which is generally recognized as being more stringent than the “unintentional” standard) for restoration of priority, the applicant should consider filing the PCT application directly with the International Bureau Receiving Office (IB/RO) or another receiving office that uses the “in spite of due care” standard. According to MPEP §1828.01, the

International Bureau has indicated that it intends to decide these matters under both the in spite of due care and unintentional standards. Therefore, in view of the fact that the USPTO only decides these matters under the unintentional standard, applicants may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant desires to request restoration of the right of priority under the in spite of due care standards.

However, U.S. applicants should note that, if they wish to file directly with the IB/RO, the applicants must have a foreign filing license.

Implementation of PCT Rule 49ter

The United States has taken a reservation to Rule 49ter because it is incompatible with U.S. law (see 35 U.S.C. §§119, 120 and 365). Thus, if an applicant files a national phase application with the USPTO that is based on a PCT application for which priority was restored under Rule 26bis.3 (i.e., the PCT application was filed within two months after the expiration of the priority period and the delay was unintentional and/or resulted in spite of due care), the USPTO will not recognize the filing date of the priority application as the effective filing date. Applicants should note, however, that although applicants entering the national phase in the United States will not be able to claim priority to the priority application under Rule 49ter, the priority date will continue to govern all PCT time limits, such as the 30-month deadline for entry into the national phase.

Implementation of Amended PCT Rules by Other Countries

Other countries that have taken a reservation for PCT Rule 26bis.3 and/or PCT Rule 49ter, as of October 1, 2008, are listed at http://www.wipo.int/pct/en/texts/reservations/res_incomp.pdf.  

Considerations for Applicants

Until the United States implements PCT Rule 49ter, the filing date of a U.S. national stage application for which priority was restored under PCT Rule 26bis.3 would be the actual U.S. filing date. See 35 U.S.C. §119. Accordingly, U.S. national stage applicants relying on PCT Rule 26bis.3 to restore priority for their PCT applications must be careful to avoid activities that would bar patentability under 35 U.S.C. §102(b) or §102(d).

For example, the claims of such a U.S. national stage application would be anticipated under 35 U.S.C. §102(b) by the corresponding PCT or foreign application if the PCT or foreign application is published prior to 18 months after the priority filing date and the U.S. national stage application is filed more than a year after publication. PCT applications are typically published 18 months after the filing date of the priority application, and the national phase entry deadline is 30 months after the filing date of the priority application,1 resulting in a gap of 12 months or less between PCT publication and national phase entry. However, if an applicant requests early publication of the PCT application, or the foreign application is published less than 18 months after the priority filing date, the applicant should file the U.S. national stage application within one year of the publication of the PCT or foreign application.

Similarly, the claims of such a U.S. national stage application would be anticipated under 35 U.S.C. §102(b), if the claimed invention had been in public use or on sale in the United States more than one year prior to the U.S. filing date. Thus, if an applicant plans to disclose publicly, sell or offer for sale the claimed invention in the United States prior to filing the U.S. national stage application, the applicant should file the U.S. national stage application within one year of the public disclosure, sale or offer for sale.

In addition, the claims of such a U.S. national stage application would be anticipated under 35 U.S.C. §102(d), if the corresponding foreign application is patented prior to the U.S. filing date.

Conclusion

Even with the amended PCT rules, an applicant should use its best efforts to file an international application within the priority period to avoid potential issues that may arise from using the two month extension for restoring priority. Furthermore, when utilizing the rules for restoring priority, an applicant should be aware of the countries that have taken reservations for PCT Rule 26bis.3 and/or PCT Rule 49ter, as the list of countries continues to change. Finally, an applicant should be aware of the criteria (i.e., “in spite of due care” standard or “unintentional” standard) for restoring priority in the designated states in which it plans to enter, and the applicant should accordingly file the PCT application with a receiving office restoring priority under the same or higher standard.