Patent Co-operation Treaty Late PCT filing • In order to validly claim priority of an earlier application, a PCT application must always be filed within the priority period (i.e., 12 months from priority date). • However, if the application is filed within two months of that period (i.e., 14 months from priority), the priority claim will not be considered void for the purposes of the international phase only, whether or not any steps are taken to restore the priority right. • Any request to restore the priority right must be made within that same two months following the priority period, and requires a fee and evidence that the delay was either in spite of due care, or unintentional – depending on which receiving Office you file at. The EPO requires due care; the UKIPO accepts the lower bar of unintentional (c.f. s5(2C) UKPA for the analogous domestic provision). Meanwhile a deliberate delay beyond 12 months is unlikely to be salvageable. – Note, however, that most designated states will then apply national criteria before recognising the restoration of the priority right. Hence for example if the UKIPO as rO accepts an ‘unintentional’ delay, this may be similarly accepted in the US national phase; but the priority right is likely to be lost in the corresponding EP and JP national phases as these require the higher standard of all due care. • For the PCT(UK) national phase, a late declaration as per s5(2B) can also be made within one month of the beginning of the national phase (R66(3)). Correction of errors • Rule 91 PCT allows for the correction of obvious mistakes, providing that the request for correction is sent to the relevant competent authority. Mistakes in the original application request should be sent to the rO. Mistakes in the description, claims or drawings during Chapter I should be sent to the ISA, or during Chapter II to the IPEA – R91(1)(b) PCT. • The mistake should be clear and should leave no doubt what the proper correction should be (R91.1(c)). Consequently, the omission of whole sections of the application (pages, figures, claims, etc) are not correctable in this manner (R91.1(g)). Rule 91 also can’t be used to rectify mistakes in the abstract or to the priority date (priority corrections use R26bis.2). • The correction should be requested within 26 months from priority (R91.2 PCT). Review & Excuse Procedure • The international phase can be terminated if the international application is refused or considered withdrawn, in which case national phase entry under A22 or A39 PCT no longer applies. • However, the PCT gives designated / elective offices discretion to allow a corresponding national application. • Where the applicant believes the PCT terminated the application in error, they can enter the national phase within two months of notification (note no ten-day rule!) under A25(1)&(2)
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Part 2: Overseas Law
