A right to claim priority exists for 12 months after filing a first patent application for an invention. If this “priority deadline” is missed, the right of priority is lost. Fortunately, the PCT has mechanisms which allow for its restoration, subject to meeting certain criteria.
However, one common pitfall that applicants face is that a successful restoration of priority at the international stage may not be effective before the European Patent Office (EPO) when the PCT enters the European regional phase. This article explores how to successfully restore the right to priority for a Euro-PCT whilst avoiding this common pitfall.
WHEN IS A RESTORATION OF PRIORITY AT THE INTERNATIONAL STAGE NOT VALID IN EUROPE?
The right to priority may be successfully restored in the international phase using one of two criteria - ‘unintentional’ or ‘all due care’ - depending on the receiving office used. Our article Missed the PCT filing deadline? Here’s what to do outlines procedures to restore the priority date of a PCT application.
The EPO applies the ‘all due care’ criterion when assessing the admissibility of re-establishment requests. This is generally a higher bar than the ‘unintentional’ criterion.
Importantly, a re-establishment of the priority right granted in the international phase using the “unintentional” criteria is not effective in proceedings before the EPO. Therefore, even if the right of priority has been restored at the international phase by a receiving office such as the USPTO that applies the unintentional criteria, it is necessary to file a new request for re-establishment at the EPO upon regional phase entry for the priority claim to be recovered.
DEADLINES
Depending on the circumstances, the deadline for requesting re-establishment of the right of priority and submitting supporting evidence expires on or shortly after entering the European regional phase. If it is intended to proceed in Europe and re-establish the priority right, action should be taken as soon as possible to make sure the deadline can be met.
More specifically, a request for re-establishment of the priority right may be admissible provided:
- The filing date of the application is within two months of expiry of the priority year of the claimed priority; and
- The request is filed in writing and the re-establishment fee is paid within one month from expiry of the 31-month deadline for entering the European regional phase or of the effective date of early entry into the European phase, which may be earlier. If further processing is used to enter late, then the request must be submitted with the request for further processing / request for re-establishment of the further processing period.
CONTENT AND GROUNDS OF REQUEST
The EPO applies a strict procedure to re-establishment matters and typically do not allow new facts to be relied upon once the request for re-establishment has been filed. Typically, detailed evidence regarding the circumstances of the late filing must be submitted at the outset to establish that the ‘all due care’ criteria has been met.
The written request must state the grounds on which it is based, and the facts relied upon. This includes:
- The cause of non-compliance (reasons for filing the PCT application outside of the priority year).
- Facts and supporting evidence/arguments establishing that the priority deadline was missed despite all due care required by the circumstances having been taken.
Typically, the factual basis cannot be altered once the deadline for filing the request has expired. After expiry of the deadline, it may be possible to clarify the facts and present further supporting evidence.
'ALL DUE CARE' CASE LAW
The EPO will only allow a request for re-establishment if it is demonstrated that an applicant was unable to observe a time limit despite ‘all due care’ required by the circumstances having been taken.
The definition of ‘all due care’ in various circumstances is shaped by case law. Therefore, detailed understanding of this niche area of EPO case law is critical in drafting successful grounds for re-establishment. Notable decisions and rational include:
- In the international phase, a restoration by another receiving office under the “unintentional” criterion is not effective in proceedings before the EPO acting as designation office (regional phase) since the EPO applies the “all due care” criterion (J 13/16, J 10/17).
- All due care must have been taken by both the applicant and their representative (J 3/93, J1/07). The obligations of each are distinct (J 19/04).
- Typically, all due care means a standard of care which a reasonably competent applicant or representative would employ in all relevant circumstances (T 30/90).
- All due care is judged in view of the situation existing before the time limit expired (T 667/92, T381/93).
- If the cause of non-compliance involves an error in carrying out an intention to comply with a time limit, all due care will be considered to have been taken if the error resulted from exceptional circumstances or an isolated mistake within a normally satisfactory monitoring system.
- The due care standard depends on the role of the person who made said mistake (T 1477/17). However, in certain circumstances the ultimate responsibility of the representative will be overriding (CLR-III-E, 5.5.4e).
Potter Clarkson’s specialist re-establishment and restorations team includes a number of attorneys with extensive experience in re-establishing rights before the EPO. If we can help you with an issue relating to restoring a lapsed patent right, please get in touch with us at reestablishment@potterclarkson.com.
This article forms part of our re-establishment and restorations hub, which you can access here. The hub covers further topics such as restoration of the priority date of a PCT application and re-establishment of an inadvertently-lapsed European patent / patent application at the EPO.
The contents of this article are summarised in our brochure on the same subject, which can be viewed and downloaded here.
This summary is provided for information only and cannot be relied upon as legal advice. If you require advice on your particular circumstances, then contact the re-establishment and restorations team at Potter Clarkson.
