Overview of PCT Priority Rights

The provisions of the PCT on the request for priority rights and their deadlines originate from the Paris Convention for the Protection of Industrial Property, that is, within 12 months from the earliest priority date, the applicant needs to submit a PCT international application and request priority rights. The restoration of priority rights for PCT patent applications in this article refers to the situation where the applicant fails to submit the PCT application within the above-mentioned prescribed time limit for some reason, and the applicant can apply for the restoration of the priority right of the PCT application under certain conditions. The restoration of priority rights procedure was first clearly stipulated in the Regulations under the Patent Cooperation Treaty (hereinafter referred to as the “PCT Regulations”) that came into effect on April 1, 2007, so the “restoration of priority rights” system is aimed at PCT international applications submitted on or after April 1, 2007 (the date when the regulations came into effect). The specific content is as follows.

If the application date of the PCT application is more than 14 months away from the application date of the first application whose priority right is requested, the priority right cannot be restored, but if it exceeds 12 months but does not exceed 14 months, there is still a possibility of restoring the priority right under certain conditions through the PCT application priority right restoration procedure. Therefore, the applicant first needs to confirm whether they meet the conditions for restoring the priority right: 

① within 2 months from the expiration date of the priority right period; 

② the reason for requesting the restoration should meet the standards of the receiving office and/or the designated office; 

③ submit a restoration statement and evidence; 

④ pay the restoration fee.

The receiving offices and/or designated offices that accept the PCT priority right restoration currently have the following two standards for restoring the priority right. One is the “Due Care” standard, which means that the applicant must prove that they have fulfilled their reasonable duty of care, are aware that their priority right deadline is approaching, and have taken necessary actions to ensure that their priority right is restored. The other is the “Unintentional” standard, which means that the applicant must prove that the loss of their priority right deadline was not caused by their intention.

If the applicant intentionally does not file an application, their priority right will not be restored. Comparatively speaking, the requirement of “Due Care” is higher than that of “Unintentional Reason”.

For the “Due Care” standard, the applicant needs to provide sufficient evidence to prove that they have taken all measures that a reasonable and prudent applicant would take in this situation, such as insufficient professional knowledge, insufficient funds, human errors of the applicant/agent, force majeure events, postal delivery problems, technical failures/IT problems, file system errors, poor communication between the agent and the applicant, etc. At this time, relevant documents, emails, management system screenshots and other evidence can be provided to prove the authenticity of the above situation to the receiving office and/or the designated office. For the “Unintentional” standard, the applicant needs to provide evidence or statements to prove that the loss of their priority right deadline was not caused by their intention (for example, unaware of the deadline, negligence, errors in the submission process).

However, although the applicant has the right to request the restoration, it does not mean that once the priority right restoration is requested and the corresponding evidence and reasons are provided, it can be accepted by the receiving office and/or the designated office, because different receiving offices and/or designated offices have different “restoration standards”, and some receiving offices and/or designated offices do not accept the restoration, which depends on the specific regulations of the receiving office and/or the designated office.

The United States, Europe, Japan and other countries can accept the request for restoring the priority right as receiving offices or designated offices, but their applicable standards are different: the United States adopts the “Unintentional” reason, Europe adopts the “Due Care” reason, and Japan previously also adopted the “Due Care” reason, but in order to reduce the burden on the applicant, it relaxed the standard from April 1, 2023, and changed to adopt the “Unintentional” reason. For South Korea and India, whether as receiving offices or designated offices, they do not accept the request for restoring the priority right. For China, as a receiving office, the standard for requesting the restoration of the priority right is “Unintentional” or “Due Care”, but as a designated office, it does not accept the request for restoring the priority right.

If the priority right is restored by meeting the “Due Care” standard, it will be effective for all designated offices; if the priority right is restored by only meeting the “Unintentional” standard, it will only be effective for the designated offices that adopt this standard, and it will not be effective for the designated offices that adopt the “Due Care” standard; if the designated office considers that a certain condition is not met, it can refuse to accept the effect of the decision of the receiving office to allow the restoration of the priority right, but it should give the applicant an opportunity to state their opinion; the decision of the receiving office to refuse to restore the priority right is not binding on the designated office.

For example, for the European Patent Office (EPO), if the receiving office restores the priority right by using the “Due Care” standard in the international stage, the applicant does not need to file a new request for restoring the priority right when the PCT application enters the European stage, because the EPO in principle recognizes the decision of the receiving office to restore the priority right. Only when the EPO reasonably suspects that the condition of “Due Care” is not met, the EPO will send a letter to notify the applicant, inform the applicant of the reason for the suspicion, and request the applicant to reply within the prescribed time limit. If the receiving office restores the priority right by using the “Unintentional” standard in the international stage, the applicant needs to file a new request for restoring the priority right to the EPO as a designated office, because the decision of the receiving office to restore the priority right by using the “Unintentional” standard is not binding on the EPO.

Practical Strategies

For Chinese enterprises or individuals, after submitting a Chinese patent application, they should consider whether they have the need for overseas layout as soon as possible, especially when the future products are likely to be sold to overseas markets, they should pay more attention to the 12-month priority period.

1. When the enterprise has a large number of patents, it is recommended to use professional monitoring software to monitor the time limit, so as to avoid overdue or omission. In the usual work, the staff involved in the enterprise’s IP management should keep the communication or exchange process related to any deadline-related content by email or other means, so as to facilitate the provision of corresponding evidence when requesting the restoration of the priority right, proving that the applicant has taken all measures that a reasonable and prudent applicant would take in this situation. For example, the applicant has submitted a large number of patent applications on time, has good patent management capabilities, and provides supporting materials (patent certificates, official website data, patent application volume, etc.); the applicant’s system manages multiple patent applications, and provides evidence to support (system manual, system screenshot, etc.); for the case that needs to restore the priority right, the applicant operates according to the normal operation process, without major mistakes, and provides evidence to support (company operation process document, system screenshot, office system screenshot, etc.).

2. When it is found that the 12-month priority period has been exceeded, the applicant should contact the professional agency or agent as soon as possible, so as to understand the specific requirements and time limits of the receiving office/designated office for the PCT priority right restoration, and cooperate to submit sufficient and reasonable reasons and solid and sufficient evidence. Submitting sufficient and reasonable reasons is crucial for whether the priority right can be successfully restored in the national stage.

3. The applicant can also enlist the help of a patent agency or a law firm to keep track of the patent deadlines, thus providing an extra layer of security.

In conclusion, restoring the patent priority right is a very intricate process, which requires the collaboration of the applicant and the experts, and the development of the optimal restoration strategy. Moreover, the experts can assist the applicant in preparing the required documents and evidence, so as to enhance the chances of restoring the PCT priority right.