1828.01 Restoration of the Right of Priority [R-07.2022]

On April 1, 2007, the regulations to the PCT were amended to allow applicants with applications which were filed on or after that date and which were also filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, to request that the right of priority be restored, provided that the failure to file the application within the priority period was in spite of due care or unintentional. See PCT Rule 26 bis.3. Grantable requests for restoration of the right of priority must be filed within two months from the date of expiration of the priority period as defined by new PCT Rule 2.4, and must be accompanied by: (i) the requisite fee as set forth in § 1.17(m); (ii) a notice under PCT Rule 26 bis.1(a) adding the priority claim, if the priority claim in respect of the earlier application is not contained in the international application; and (iii) a statement that the delay in filing the international application within the priority period was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. If the applicant makes a request for early publication under PCT Article 21(2)(b), any of requirements (i), (ii), or (iii) above which are filed after the technical preparations for international publication have been completed by the International Bureau shall be considered as not having been submitted in time.

The International Bureau decides these matters under both the in spite of due care and unintentional standards. Therefore, in view of the fact that the USPTO only decides these matters under the unintentional standard, applicants may wish to consider filing directly with the International Bureau as receiving Office instead of the United States Receiving Office in the situation where applicant desires to request restoration of the right of priority under the in spite of due care standard. Applicants may also request that an application be forwarded to the International Bureau for processing in its capacity as a receiving Office in accordance with PCT Rule 19.4(a)(iii) in situations where applicants, after the international application has been filed, realize that the application was filed after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard. However, the United States Receiving Office may decline to forward the international application to the International Bureau under PCT Rule 19.4(a)(iii) if substantial processing of the international application by the United States Receiving Office has occurred. An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless: (1) the invention was not made in the United States; or (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order under 37 CFR 5.2, and the international application does not contain modifications, amendments, or supplements changing the general nature of the invention in a manner that would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181. See 37 CFR 5.11 and 5.15.

It should be noted that restoration of a right of priority to a prior application by the United States Receiving Office, or by any other receiving Office, under the provisions of PCT Rule 26 bis.3, will not entitle applicants to a right of priority to such prior application in a national stage application in any office that has notified the International Bureau under PCT Rule 26bis.3(j) and 49ter.1(g) of an incompatibility with its national law. A full listing of the national offices that will not accept the restoration of the right of priority in the national stage may be found on WIPO’s website at www.wipo.int/pct/en/texts/reservations/res_incomp.html. In the United States, a right of priority that has been restored under PCT Rule 26bis.3 during the international stage will be effective in the U.S. national stage. See MPEP § 1893.03(c).

It should also be noted that regardless of the PCT Rule 26bis.3(j) and 49ter.1(g) status of any particular office, the priority date will still govern all PCT time limits, including the thirty-month period for filing national stage papers and fees under 37 CFR 1.495. PCT Article 2(xi), which defines “priority date” for purposes of computing time limits, contains no limitation that the priority claim be valid.

In addition, in the context of a request for restoration of the right of priority pursuant to PCT Rule 26bis.3(a), the receiving Office shall, upon reasoned request by the applicant or sua sponte, not transmit documents or parts thereof in relation to the request for restoration, if it finds that (i) the document or part thereof does not obviously serve the purpose of informing the public about the international application; (ii) publication or public access or any such document or part thereof would clearly prejudice the personal or economic interests of any person; and (iii) there is no prevailing public interest to grant access to that document or part thereof. See PCT Rule 26bis.3(h-bis).

1828.02 Continuation or Continuation-in-Part Indication in the Request [R-07.2022]

The Supplemental Box of the Request form should be used where the applicant has an earlier pending United States nonprovisional application or international application designating the U.S. and wishes the later-filed international application to be treated as a continuation or continuation-in-part of such earlier application. To properly identify the parent application, the specific reference must identify the parent application by application number and indicate the relationship to the parent application (i.e., “continuation” or “continuation-in-part”). The specific reference must also indicate the filing date of the parent application if the parent application is an international application. See 37 CFR 1.78(d)(2).

The applicant may correct or add to the request any indication referred to in PCT Rule 4.11 by a notice submitted to the International Bureau within a time limit of 16 months from the priority date, provided that any notice received by the International Bureau after the expiration of that time limit shall be considered to have been received on the last day of that time limit if the notice reaches the International Bureau before the technical preparations for international publication have been completed. See PCT Rule 26quater.1. Where any correction or addition of an indication referred to in PCT Rule 4.11 is not timely received under PCT Rule 26quater.1, the International Bureau shall notify the applicant accordingly and shall proceed as provided for in the Administrative Instructions. See PCT Rule 26quater.2.

The inclusion of a proper reference to the parent application in the PCT Request form or the presence of such reference on the front page of the published international application will satisfy the requirement in 37 CFR 1.78 for the presentation of a benefit claim in an application data sheet. See 37 CFR 1.76(g). In such cases, a reference to the parent application in an application data sheet would not be required in the national stage application. Furthermore, inclusion of a proper reference to the parent application in the PCT Request form is also beneficial where applicant chooses to file a continuing application claiming benefit under 35 U.S.C. 365(c) to the international application (i.e., a bypass application) rather than entering the U.S. national phase under 35 U.S.C. 371. See MPEP § 211.02, which indicates the right to rely on a prior application may be waived by an applicant if a reference to the prior application is not included in the later-filed application.