Restoration of the Right of Priority under the PCT – different “Criterion for Restoration” before the USPTO and the EPO

Executive Summary

The criterion for restoration of unintentionality applied by the USPTO has no effect in proceedings before the EPO. The EPO applies the due care criterion.

Case

An international application under the PCT has been filed with the USPTO as Receiving Office. As the international application was not filed within the priority period, the applicant submitted a request for restoration of the right of priority with the USPTO. The USPTO decided to restore the right of priority based on the finding that the failure to file the international application within the priority period had been “unintentional”. After entry of the application into the European phase, the EPO issued a communication entitled “Invitation to file a request for restoration of the right of priority under Rule 49ter. 2 PCT – Invitation to file observations under Rule 49ter. 1 d PCT”.

Rule 49ter. 2 PCT reads as follows

“(a) Where the international application claims the priority of an earlier application and has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date, the designated Office shall, on the request of the applicant in accordance with paragraph (b), restore the right of priority if the Office finds that a criterion applied by it (‘criterion for restoration’) is satisfied, namely, 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; or
• was unintentional.

Each designated Office shall apply at least one of those criteria and may apply both of them”.

The criterion before the EPO

The Legal Board of Appeal decided in the present case as follows:

• The filing of a request pursuant to Rule 49ter. 2 PCT is required in order for the application to proceed with a valid priority claim in the proceedings before the EPO.
• The restoration of the right of priority granted by the USPTO has no effect in the proceedings before the EPO because the EPO neither applies the criterion of “unintentionality” nor a more favorable one (Rule 49ter. 1 b PCT) but the “due care” criterion.

Please note that under the current patent practice before the EPO, “due care” means “all due care” or, in other words, that the party has been diligent and careful and the delay was caused by unforeseeable factors. Source: The Annotated European Patent Convention, updated till November 15, 2017, 25th revised edition by Derk Visser, published by Wolters Kluwer, page 314.

Recommendations

According to the Euro-PCT Guide of the EPO, Point 650, May 9, 2018:

“If the applicant wants the priority claim to be valid in the procedure before the EPO as designated/elected Office, a request for restoration must always be filed if, in the procedure before the receiving Office:

• no request for restoration of priority right was filed;
• the request for restoration of priority right filed with the receiving Office was rejected (cp. Rule 49ter. 1 f PCT);
• a request for restoration of priority right filed with the receiving Office was granted only under the “unintentional criterion”.