When Might the Japan Patent Office Reject a Recovered Priority Claim in a PCT Application?
A client recently asked about reinstating (restoring priority right in a patent application, so we summarized some points below.
When an applicant wants to file a priority claim based on a prior application when filing an international PCT (Patent Cooperation Treaty) application, sometimes the priority period of one year may have passed before the PCT application is filed. The questions surround whether it might be possible to reinstate the patent priority claim in such a case, and if so what the specific requirements are.
Do the PCT Rules Allow for Reinstatement of a Priority Claim after the Priority Claim Deadline?
Yes, the PCT rules do allow some requests to reinstate a claim to priority for an international patent application even after the one-year deadline—if the PCT application is filed within two months of the end of the priority claim deadline.
An applicant, to receive the exception, needs to submit the proper documentation to (1) the Receiving Office (RO: the patent office that receives the international patent application, for example the USPTO in the United States) and/or (2) the designated state/region’s office (the patent office that handles the national/regional phase entry documents of the international application, for example the JPO in Japan). The applicant needs to choose carefully what documents to submit to which patent office, depending on the reasons for the failure to file the PCT application and claim priority by the one-year deadline.
An example of a patent office that will take in an international application within 14 months of the priority date on the basis of "unintentionality" late filing is the USPTO. In the United States, at the national phase as well a reinstatement or recovery of priority claim is fairly easy to do. On the other hand, some patent offices like in Japan and the EPC are much more rigorous, requiring that the oversight be in spite of the criterion of "due care." (By the way, Brazil, Canada, China, Columbia, Cuba, Czech Republic, Germany, Algeria, Indonesia, India, Republic of Korea, Mexico, Norway, the Philippines, and Turkey currently allow for no application of a priority reinstatement claim, so there is no method of recourse at the receiving office or designated office stages.
How Does the Receiving Office Judge Priority Claim Reinstatement?
The receiving office in each country may use a different standard for accepting or rejecting a petition to recover priority right, and this is important. The PCT Rules (see the Receiving Office Guidelines, ch. 7) lets each receiving office choose one or two of the two standards, "due care" or "unintentionality." "Due care" is a more strict standard.
The applicant may be allowed to file for reinstatement of priority claim in accord with the standard that the receiving office uses. However, it is important to beware that even if the receiving office accepts a reinstatement of priority claim, the designated office may choose not to go with that acceptance.
If the designated office uses a less or equally strict standard as the receiving office for priority right reinstatement, then the decision of the receiving office can carry over with the designated office, but if the designated office ahs a stricter (higher) standard, then the applicant may need to file for reinstatement of the priority right yet again, to the designated office.
An example of this could be that as the United States uses the "unintentionality" standard while Japan uses the "due care" standard, Japan's patent examiners at the JPO use a stricter standard for judging priority claim reinstatement. Even if the USPTO were to allow an exception to the 12-month priority deadline, if the JPO is selected as a designated office, the JPO will not simply let the application retain that priority right. It is necessary to file a request or petition to reinstate the priority claim with the JPO if the applicant wants to file national phase entry in Japan with that priority claim intact.
How Does the Designated Office Judge Priority Claim Reinstatement?
You should also be aware of what standard the designated state’s office uses for allowing reinstatements of priority claims that have passed the one-year deadline.
For example, even if the applicant did not file for reinstatement of priority right with the receiving office, or even could not, some receiving patent offices will accept a request for reinstatement. A common example may be that though the Chinese and Korean patent offices (SIPO and KIPO) do not allow reinstatement of priority claims, an international application filed with the SIPO or KIPO can, upon entry to a designated office like the JPO or USPTO, individually seek reinstatement of priority right (upon condition of filing of the international application within 14 months of the priority date).
If the designated office is the JPO, then the request for reinstatement of priority claim must be filed by one month from the national phase entry relevant date (when the national phase is completed; if the Japanese translation is filed after national phase, then that date). The JPO uses the stricter "due care" standard for weighing acceptability of reinstatement, so it is necessary to submit a full-enough reason and evidence to meet that standard by that short deadline.
On the other hand, if the receiving office has already received and accepted a request for reinstatement of priority claim, it is important to verify if the standard used there was the same as that used by the designated office. If they both use the same standard, then according to the PCT Rule 49ter 1, the decision made by the receiving office is deemed valid for the designated office, as well. In this case, no procedure for reinstatement of priority claim is necessary.
However, if the standards differ, the applicant needs to file a (another, if one was filed for a lower standard to the receiving office) request for reinstatement to the designated office such as Japan. The deadline for filing that request is as mentioned above, one month after the national entry relevant date in the case of Japan.
What Happens if My Priority Claim Is Rejected in Japan?
Even if the reinstatement of a priority claim is rejected, the international patent application still is a valid application. The only thing that happens is that the standard of novelty and inventive step is moved to the date of the international application instead of the priority date.
Therefore, an international patent application that enters a country like Japan and loses priority claim may still be patented as long as there are no condemning prior art documents before the date of the PCT international application. The patent examiner will make that determination. And there are plenty of cases where applications whose priority claim was lost still became patents.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.