India: Consequences Of Missing The Deadline For Filing PCT

¹To claim the priority of an earliest application, an international application must always be filed within 12 months from the filing date of the earlier application; failing to do so, the right of priority is lost. However, a remedy is provided wherein the international application can be filed within two months from the date on which the 12-month priority period expires. The priority claim in this special case will not be considered void for the purposes of the international phase, and all time limits during the international phase will still be calculated from the earliest priority date, even where no action is taken to restore the right of priority (see PCT Rule 26bis.2(c)(iii)).

If the international application is filed after 12 months from the priority date but within the 2 months from the expiration of the time limit, the applicant still can restore the priority of the earlier application. However, the restoration process of the right of priority is a fairly complex procedure, and several requirements must be taken care of.

The request for restoration must be filed along with the fees to the receiving office within the time limit of two months from the expiration of the priority period, and must be supplemented by a statement explaining the reasons for the failure to file the international application within the priority period; in some cases, a declaration or other evidence in support of the statement of reasons should also be submitted (PCT Rule 26bis.3(f)).

²Under Rule 26bis.3(f), the receiving office requires the applicant to submit a declaration or other evidence in support of the statement of reasons or, if some evidence has already been provided, to submit additional evidence within a reasonable time limit (items 3 and 4 of Form PCT/RO/158). While for the "unintentionality" criterion, a statement indicating that the failure to comply with the priority period was not deliberate may be sufficient, the receiving office may, nevertheless, require that this statement be submitted in the form of a declaration, and may require that the statement provides the reasons for the failure, supported by evidence if necessary. For the "due care" criterion, the receiving office may require that the statement of reasons is substantiated with a declaration or other evidence.

³Further, according to Rule 26bis.3(a)(ii), the receiving office shall restore the right of priority if it finds that the failure to file the international application within the priority period was "unintentional". The applicant can satisfy this criterion by demonstrating that the delay in filing the international application within the priority period was not deliberate and there is a continuing underlying intention to file the international application within the priority period. The receiving office should focus on the applicant's intent at the time when the priority period expired, irrespective of any changes in the applicant's intent before or after the expiration of the priority period.

Conclusion

It is always advisable to file the international application well before the end of the 12 month priority period and the applicant should not be dependent on the fact that priority claims of international applications filed within two months of the 12 month priority period can be restored as it is a relatively complicated procedure for requesting for restoration of priority date.

Footnotes

1. https://www.wipo.int/pct/en/newslett/practical_advice/pa_092011.html

2. https://www.wipo.int/pct/en/texts/ro/ro166a_166t.html

3. https://www.wipo.int/pct/en/texts/ro/ro166a_166t.html

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