3.11.4 Restoration of the Right of Priority under the PCT

Date Published

For international applications filed after 1 April 2007 the PCT Rules provide for the restoration of the right of priority where an international application is filed up to two months after the end of the normal 12-month priority period.  Formally this is not an extension of the priority period – but it has the same practical effect.

Subject to reservations by particular PCT member states, restoration of the right of priority may be made by either the Receiving Office or a Designated Office.  Australia does not have reservations to these provisions and hence requests for restoration may be filed with IP Australia as either a Receiving Office or Designated Office.

Restoration of Priority by the Receiving Office

The restoration mechanism is largely dealt within Rule 26bis.3, and operates as follows:

  • Restoration is available in respect of priority applications filed between 12 and 14 months before the International Filing Date [Rule 26bis.3(a)].
  • The request for restoration must be filed no later than 14 months from the filing date of the priority application [Rule 26bis.3(e)].

    The request should be accompanied by a declaration or other evidence in support of the requested restoration [Rule 26bis.3(b)(iii)], and the Receiving Office may require the declaration be filed with it ‘within a time limit which shall be reasonable in the circumstances’ [Rule 26bis.3(f)].
  • An extension can be granted on the basis that the Receiving Office is satisfied that the failure to file the international application within the priority period:
    • occurred in spite of due care required by the circumstances having been taken;
    • was unintentional.
  • Subject to reservations being made, each Receiving Office shall apply at least one of these criteria, and may apply both. IP Australia will apply both criteria.
  • A Receiving Office may charge a fee for processing requests for restoration of priority [Rule 26bis.3(d)].

  • The request must state the reasons for failure to file the international application within the priority period, and preferably be accompanied by a declaration [Rule 26bis.3(b)]. The requirements of this declaration are the same as for declarations required to support an extension of time under s.223 of the Patents Act 1990.

  • A request cannot be refused without giving the applicant an opportunity to make observations on the intended refusal [Rule 26bis.3(g)].

  • Where an extension is granted, that fact, and the criteria applied, will be published on the pamphlet [Rule 48.2(a)(xi) and (b)(vi) and (vii)].

  • Subregulation 3.13A provides for the restoration of the right of priority provided that the restored right of priority has not been found to be ineffective under Rule 49ter.1.

An important issue is the basis of the restoration. If the restoration occurs under the ‘in spite of due care’ criterion, that restoration must be recognised by all designated offices (subject to reservations having been made).  Restorations based on the ‘unintentional’ criterion will only be recognised by those countries that apply ‘unintentional’ in their national law.  Accordingly an extension granted on the basis of ‘in spite of due care’ is far preferable in terms of coverage than one based on ‘unintentional’.

IP Australia requires a declaration setting out the facts which support the request for restoration and will charge a fee of $200 for processing these requests, regardless of whether a request is made under either or both criteria (fee item 308). Note however, that if the applicant provides sufficient reasons in the first instance for restoration of priority, but not in the form of a declaration, it is not necessary to request those reasons in declaratory form.  The requirements of the declaration are the same as for declarations required to support an extension of time under s.223 of the Patents Act 1990 (see 3.11.1 Extensions of Time – Section 223 and/or Written Evidence and Declarations).  The time limit for filing the declaration and paying the fee will be the same as the time limit applicable under Rule 26bis.3(e) (ie. normally 2 months from the expiration of the priority period).

If IP Australia intends to refuse a request for restoration of priority, the applicant will be provided a notice of intended refusal according to form PCT/RO/158 and given at least one opportunity to make observations and, where applicable, to submit further declaratory evidence supporting the request for restoration.  The period provided for observations or submission of further evidence will be at least one month

The Rules have put in place a regime that seeks to provide a high degree of certainty.  However there is a need for checks and balances at the Designated Office stage.  Accordingly, if a restoration is granted:

  • the extension is not effective in a Designated State where the Designated Office or a court finds that the requirements to justify the restoration were not complied with [Rule 49ter.1(c)].  This particularly relates to the existence of the relevant criterion; but
  • a Designated Office shall not review a decision of the Receiving Office unless it reasonably doubts (in particular) the relevant requirements were met [Rule 49ter.1(d)].

The fact that a Receiving Office refuses a request for restoration does not prevent the applicant applying for restoration under its national law, with Rule 49ter.2 setting out the requirements of national law that must be available (subject to any reservations made).

In general, the criterion of ‘unintentional’ can be equated to the s.223(2)(a) condition of ‘error or omission’.  The requirement of ‘in spite of due care’ is of narrower ambit.  It would include the force majeure situations that arise under the s.223(2)(b) condition of ‘circumstances beyond control…’.  It would also cover a range of s.223(2)(a) errors or omissions.  But it would not cover situations where the applicant or their agent had not exercised due care to try to ensure the application was filed within the priority period.  For example, a failure to maintain a diary system would probably be taken as an absence of due care.  See for more information on the meaning of “despite due care". Also see the PCT Receiving Office Guidelines – Restoration of the Right of Priority: 166J-166M.

Restoration of the Right of Priority by IP Australia as a Designated Office

In the circumstances indicated above the PCT also provides for restoration by a Designated Office on the basis that the failure to file the international application in time occurred in spite of due care or was unintentional.

If a request is made to IP Australia seeking restoration of the right of priority on the basis of Rule 49ter.2 it will be treated as a request for an extension of time under Section 223 of the Act.