Play with Patent Priority Restoration

As we all know, when a patent applicant uses the Paris Convention to apply for a patent abroad, the time limit for requesting priority is 12 months. Once it is missed, it is... missed.

However, in the PCT international application process, this 12-month period is not absolute. As the receiving offices for PCT international applications, most national offices generally adopt a tolerant and accepting attitude towards the restoration of priority rights in order to maximize the rights of domestic applicants. In other words, applicants can restore priority within 12-14 days. Request priority restoration within a two-month period. This is not an extrajudicial favor from these national offices, but because in the PCT acceptance procedure, the national offices act as representatives of the World Intellectual Property Organization (WIPO) in their own countries and accept PCT international applications from applicants from this country on behalf of WIPO. In this case, the patent regulations of this country should not apply, but the Patent Cooperation Treaty (PCT) and the PCT Implementing Regulations should apply:

Article 26bis.3 of the Regulations of the Patent Cooperation Treaty stipulates that (a) if the international filing date of the international application is after the expiry date of the priority period, but within the period of 2 months from the expiry date of the priority period, according to Subparagraphs (b) to (g) of this Article and, at the request of the applicant, the failure to file an international application within the priority period is due to (i) Failure to meet the deadline occurs negligently despite due care being taken (due care, reasonable excuse); or (ii) unintentionally. The receiving Office shall restore the right of priority. Each receiving Office should choose to apply at least one of the above criteria, or both.

Therefore, the Patent Cooperation Treaty actually opens a floor-to-ceiling window for applicants who miss the priority deadline. However, because the national laws of some countries conflict with this PCT provision, they can only adopt reservations on this provision, such as Brazil and Canada. , India, Indonesia, Mexico, South Korea, Philippines, etc. That is to say, although applicants from these countries used this clause when submitting PCT international applications, they cannot use this clause to restore priority when entering the national phase, because of the priority The loss of rights will inevitably result in the loss of part or all of the rights in the application. In fact, the implementation of the priority restoration clause in China has also been demonstrated for several years. After the Chinese Patent Law underwent the fourth revision, the reservation for this clause was finally abandoned in June 2021. For Chinese applicants For me, this is a great thing.

Today, Page Code has compiled the priority restoration standards of 30 countries for your reference.

It should be noted that if the priority restoration procedure is used in the PCT international phase, when it subsequently enters the national phase, the priority restoration standards of the receiving Office and the designated Office should be unified. If the standards used to restore priority are different, it is likely that you will not be able to enter this process. Designated countries need to be explained clearly to customers when submitting PCT international applications to avoid unnecessary disputes with customers in the future.