Accueil PCT Applications The International Phase Procedural Rules Priority

Priority

Correction or addition of priority

Principle

It is possible to correct an existing priority claim or add one by sending a communication to the IB or the RO (R26bis.1.a PCT).

Time limit

This correction or addition may be made (R26bis.1.a PCT):

  • within a time limit of sixteen months from the earliest of:
    • the earliest priority date before correction/addition and
    • the earliest priority date after correction/addition;
  • within a time limit of four months from the international filing date.

Furthermore, the time limit shall be deemed to have been met if the correction is received within one month following the notification from the RO or the IB indicating that the priority claim is considered not to have been made (R26bis.2.b PCT, for correction only).

Late submission

If a correction or addition is received by the IB after the expiration of this time limit but before 30 months from the priority date, the IB may publish this information upon payment of an official fee (R26bis.2.e PCT).

Impact of early publication

Any request for correction/addition shall be considered not to have been received if it is made after the applicant’s request for early publication of the application (unless this request for early publication is withdrawn before completion of technical preparations, R26bis.1.b PCT, i.e., 15 days before publication, applicant’s guide, §9.013).

Content

Any correction or addition of priority must comply with R4.10.a PCT and must specify, for the earlier application:

  • the filing date (R4.10.a.i PCT);
  • the application number (R4.10.a.ii PCT);
  • the place of filing:
    • The Paris Convention or WTO member state in which the filing was made (R4.10.a.iii PCT)
    • the authority responsible for grant (if a regional application, R4.10.a.iv PCT) and at least one Paris Convention or WTO member state for which the application was filed (R4.10.b.ii PCT) if the regional application does not cover only such states;
    • the RO (if an international application, R4.10.a.v PCT).

Effects on time limit calculation

Any time limit calculated from the priority date that has not yet expired shall be recalculated (R26bis.1.c PCT).

Withdrawal of a priority claim

Competent authorities

The applicant may withdraw a priority claim by submitting a declaration to (R90bis.3.c PCT):

  • the IB;
  • the RO;
  • if a demand for examination has been filed (A39.1 PCT), the IPEA.

This authority shall transmit to the IB the date of receipt of this withdrawal.

Time limit

This declaration must be received by the competent authority within 30 months from the priority date (R90bis.3.a PCT).

Official fee

Withdrawal does not incur any official fees (applicant’s guide §11.056).

Signature

The withdrawal declaration must be signed by all the applicants (R90bis.5 PCT).

This signature may be replaced by the signature:

  • of the representative (R90.3.a PCT);
  • of the common representative designated by the other applicants (R90.3.c PCT).

However, the applicant deemed to be the common representative may not sign this declaration (R90.3.c PCT together with R90bis.5 PCT): in this case, all the applicants must sign.

Power of Attorney

A power of attorney is always required in this case by the competent authority (R90.4.e PCT): no waiver by the authority is possible.

Effects

Re-calculation of time limits

Upon withdrawal of priority, a number of time limits may be affected (those calculated from the date of the earliest priority).

Any affected time limit that has not expired is recalculated from the new priority date (R90bis.3.d PCT).

This may, for example, delay publication (A21.2.a PCT), provided that the withdrawal declaration reaches the IB before the completion of the technical preparations for publication (R90bis.3.e PCT).

If the withdrawal is made after the completion of the technical preparations, a notice of withdrawal is published in the gazette (R48.6.c PCT).

For designated/elected States

The withdrawal of a priority has no effect for the designated Offices that have already begun to process or examine the application in the context of an early national phase entry (R90bis.6.a PCT together with A23.2 PCT or A40.2 PCT).

Restoration of the Right of Priority

Restoration by the RO

Principle

For applications filed on or after April 1, 2007, it is possible to have the right of priority restored by the RO if the claimed priority is older than 12 months from the filing date but does not exceed 14 months (R26bis.3.a PCT).

Restoration Conditions

In order to benefit from the restoration of their priority right, the following conditions must be met:

  • The RO must not have made any reservations (R26bis.3.j PCT);
  • The claimed priority is more than 12 months from the filing date but does not exceed 14 months (R26bis.3.a PCT);
  • The priority claim, if missing, must be added (R26bis.3.c PCT) within a period of 2 months from the expiration date of the priority period (R26bis.3.c PCT together with R26bis.3.e PCT);
  • A request must be submitted to the RO (R26bis.3.b.i PCT together with R26bis.3.e PCT):
    • within a period of 2 months from the expiration date of the priority period,
    • before any request for early publication, and
    • before the completion of technical preparations for publication (within 15 days prior to publication, applicant’s guide §9.013);
  • The request must indicate the reasons that prevented the filing of the application within the priority period (R26bis.3.b.ii PCT). These reasons must justify, according to the RO’s choice (R26bis.3.a PCT):
  • The evidence and any declarations required by the RO must be provided (R26bis.3.b.iii PCT together with R26bis.3.f PCT);
  • Any restoration official fees must be paid to the RO (R26bis.3.d PCT) within a period of 2 months from the expiration date of the priority period together with (R26bis.3.d PCT together with R26bis.3.e PCT).

States Having Made a Reservation

The following States have made a reservation under R26bis.3.j PCT (i.e., do not allow restoration when acting as RO):

  • BE Intellectual Property Office (Belgium)
  • BR National Institute of Industrial Property (Brazil)
  • CO Superintendence of Industry and Commerce (Colombia)
  • CU Cuban Industrial Property Office
  • CZ Industrial Property Office (Czech Republic)
  • DE German Patent and Trademark Office
  • DZ Algerian National Institute of Industrial Property
  • GR Organization of Industrial Property (OBI) (Greece)
  • ID Directorate General of Intellectual Property (Indonesia)
  • IN Patent Office (India)
  • IT Italian Patent and Trademark Office
  • JP Japan Patent Office
  • KR Korean Intellectual Property Office
  • NO Norwegian Industrial Property Office
  • PH Intellectual Property Office (Philippines)

Effects

In Case of Restoration

Normally, the restoration of the right of priority by the RO takes effect in all designated/elected States, subject to the following conditions:

  • such States have not made reservations (R49ter.1.g PCT for designated States, R76.5 PCT together with R49ter.1.g PCT for elected States) (i.e., are not bound by the RO’s decision or simply do not allow restoration):
    • BR Instituto Nacional da Propriedade Industrial (Brazil)
    • CA Canadian Intellectual Property Office
    • CN National Intellectual Property Administration of the People’s Republic of China
    • CO Superintendence of Industry and Commerce (Colombia)
    • CU Cuban Industrial Property Office
    • CZ Industrial Property Office (Czech Republic)
    • DE German Patent and Trademark Office
    • DZ Algerian National Institute of Industrial Property
    • ID Directorate General of Intellectual Property (Indonesia)
    • IN Patent Office (India)
    • JP Japan Patent Office
    • KR Korean Intellectual Property Office
    • LT Lithuanian Patent Office
    • MX Mexican Institute of Industrial Property
    • NO Norwegian Industrial Property Office
    • PH Intellectual Property Office (Philippines)
    • TR Turkish Patent and Trademark Office
    • US United States Patent and Trademark Office
  • such States apply a standard that is as or less stringent than the standard applied by the RO:
    • if the RO uses the « due care » standard, the effect applies to all designated/elected States (R49ter.1.a PCT for designated States, R76.5 PCT together with R49ter.1.a PCT for elected States);
    • if the RO uses the « unintentional » standard, the effect applies to all designated/elected States applying the same standard (R49ter.1.b PCT for designated States, R76.5 PCT together with R49ter.1.b PCT for elected States);
  • such States would not have granted restoration (R49ter.1.c PCT for designated States, R76.5 PCT together with R49ter.1.c PCT for elected States) and there were reasons to doubt that the restoration was valid (R49ter.1.d PCT for designated States, R76.5 PCT together with R49ter.1.d PCT for elected States). The applicant must be given the opportunity to present observations.
In Case of Non-Restoration

No State is bound by a decision of non-restoration (R49ter.1.e PCT for designated States, R76.5 PCT together with R49ter.1.e PCT for elected States).

Restoration by the Designated/Elected State

Principle

For applications entering the national phase on or after April 1, 2007, it is possible to have the right of priority restored by the designated/elected Office if the claimed priority is more than 12 months from the filing date but does not exceed 14 months (R49ter.2.a PCT for designated States, R76.5 PCT together with R49ter.2.a PCT for elected States).

Restoration Conditions

To benefit from the restoration of their priority right, the following conditions must be met:

In the event of a refusal, the applicant must be given the opportunity to present observations (R49ter.2.e PCT for designated States, R76.5 PCT together with R49ter.2.e PCT for elected States).

States having made a reservation

The following States have made a reservation under R49ter.2.h PCT (for designated States, R76.5 PCT together with R49ter.2.h PCT for elected States):

  • BR National Institute of Industrial Property (Brazil)
  • CA Intellectual Property Office of Canada
  • CN State Intellectual Property Office of the People’s Republic of China
  • CO Superintendence of Industry and Commerce (Colombia)
  • CU Cuban Office of Industrial Property
  • CZ Industrial Property Office (Czech Republic)
  • DE German Patent and Trademark Office
  • DZ Algerian National Institute of Industrial Property
  • ID Directorate General of Intellectual Property (Indonesia)
  • IN Patent Office (India)
  • JP Japan Patent Office
  • KR Korean Intellectual Property Office
  • LT Lithuanian Patent Office
  • MX Mexican Institute of Industrial Property
  • NO Norwegian Industrial Property Office
  • PH Intellectual Property Office (Philippines)
  • TR Turkish Patent Institute
  • US United States Patent and Trademark Office

Internal priority issue

Principle

When claiming priority from a national or international application in a PCT application, the question of internal priority arises.

Indeed, for State X for which a national application of State X is claimed, the international application does not claim a priority within the meaning of the Paris Convention (since Article 4.A.1 of the Paris Convention states that priority is for « other States »).

Article 8.2.b PCT clearly states that, in such situations, the national law of State X takes precedence over the provisions of the Paris Convention.

For example, the following situations may occur:

  • the national law of State X does not provide for internal priority;
  • the national law of State X states that the filing of an application claiming priority from an application in State X has the effect of withdrawing the national application (e.g., Germany, Applicant’s Guide, Annex B1, DE)
    • consequently, pursuant to Rule 4.9.b PCT, it is possible to withdraw certain designations at the time of filing (DE, JP, KR).

Case of the extension of the priority period

Furthermore, particular attention must be paid to the filing dates of the priority application and the international application claiming priority.

For example, if a « US provisional » application is filed on July 14, 2000 with the USPTO, and then a PCT application is filed with the INPI on July 15, 2001, the Paris Convention priority is valid (by virtue of the extension granted in the case of a public holiday under Article 4.C.3 of the Paris Convention and also under Rule 80.5.i PCT).

However, regarding internal priority, these provisions are inapplicable, and it is highly likely that the USPTO will refuse the priority, arguing that the PCT application was filed after the internal priority period provided for by national legislation (Article 8.2.b PCT), since the USPTO was open on July 14, 2001.

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