All is Not Lost: How to Restore your Priority Right!
This post was first published on 24th July, 2014.
We are well aware of the importance of the Priority Right and therefore also know what losing a priority right can cause. It may throw even the strongest of inventions off balance. A valid priority claim would give us the priority date which is the date of filing of the first application. This date is also known as “effective date of filing” in many jurisdictions. In other words, as the name suggests, the prior art that is taken into account for examining the novelty and inventive step/non-obviousness of the claimed invention is the information available to the public before the priority date of the claimed invention, i.e., the date of filing of the first application and thus the priority date is most relevant for the examination of novelty and inventive step/non-obviousness for subsequent applications claiming the priority of the first application.
Needless to say, a priority application acts as the parent application for subsequent applications such as an international application or convention application, national phase application or divisional application. Thus, it is mandatory that priority can be claimed by adherence to deadlines as well as in the manner required under the law of the country where the subsequent applications are filed and if these conditions are not fulfilled, priority date may not be considered valid. This post elucidates how a lost priority right can be restored.
To everyone’s dismay, a lost priority right cannot be restored in India. Following deadlines are stringently implemented and no reinstatement for priority is admissible.
- Deadline to file PCT application with India as Receiving Office
- Convention application claiming priority from an application filed outside India
- Filing National Phase application in India
Criteria for Restoration of Priority Right for an international application: The failure to file international application within the priority period i.e., 12 months from the priority date, or non-submission of priority document within 16 months from the priority date, could lead to loss of priority unless it is proved that said misses occurred:
- Inspite of due care as required by the circumstances having been taken or
- and loss of priority right was unintentional
All designated offices to which these rules are applicable must apply at least one of these criteria or one another that is more favorable from the point of view of the applicant. If a designated office wishes, it may apply both criteria for restoration.
Criteria for Restoration of Priority Right for application filed in Convention Countries:
1. EPO: Article 87 of EPC states that an application for a patent shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application.
If an international application is filed after expiry of the priority period a request for restoration of priority right under Rule 26 bis.3 PCT may be filed with the EPO as receiving office.
The EPO, as receiving office, may only grant a request for restoration of priority right if the following requirements are met:
- The international filing date is within two months from the date on which the priority period expired;
- The request for restoration is filed within the time limit of two months from the date on which the priority period expired;
- The fee for restoration of the right of priority is paid within the same time limit, which is not extended if the EPO acts as receiving office;
- The request for restoration is supplemented by a statement explaining the reasons for failure to file the application within the priority period together with, where available, any evidence; and
- The failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken by the applicant.
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.
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; (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.
It must also be noted that even though restoration of such a right will not entitle applicant to the right of priority in a subsequent United States application, 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 .
Applying for restoration and attempts to reinstate priority cannot be claimed by way of right and are rather at the discretion of concerned authorities and hence we strongly opine that required deadlines be docketed and adhered to strictly to avoid jeopardizing patent rights of the applicant is any manner.