PCT Practical Advice and Updates, a Report from the Seminar “PCT at the EPO” in Bucharest

O. Boncea (RO), M. Nollen (BE)

A new seminar from the series “PCT at the EPO” took place in Bucharest on 12 July 2018. It was organized by the European Patent Office with the support of the Romanian State Office for Inventions and Trademarks (OSIM). Around thirty participants attended the seminar. Although this number may not look impressive compared with other countries with a high number of PCT applications, it is gratifying to see that the interest in the patent field is increasing in Romania. In fact, the majority of the participants were newcomers in the field, representing the main IP companies in the country.

The whole-day seminar contained a mixture of theoretical aspects combined with a lot of practical advices. The highly interactive presentations, fully engaged the public. The lectures were directed to a good understanding of how the PCT system works, the overall procedure and benefits thereof. Additionally, real case studies offered the opportunity to learn from actual situations and not only from hypothetical ones. Furthermore, new rules and developments were presented.

The programme of the seminar

The seminar included two speakers and three topics. The first one was Isabel Auría Lansac, lawyer at the PCT Affairs Department within the EPO. She gave insight into the way the EPO as Receiving Office treats restoration of the right of priority and missing elements or parts. The participants were encouraged to "judge" each practical case on their own before presenting the solution.

The system as seen from a professional representative perspective, including also a comprehensive analysis of PCT Direct, was presented by Filippo Santi, European patent attorney, who advised the participants on how to take strategic decisions in accordance with the clients' needs.

The seminar ended with a very useful presentation on PCT updates, again by Mrs Auría Lansac. These updates included the proposed amendment to Rule 69.1(a) PCT which would allow a systematic earlier start of Chapter II procedure. Further, the so called Collaborative Search and Examination Pilot Project was presented, wherein the five major Patent Offices around the world (EPO, USPTO and the patent offices from Korea, Japan and China) cooperate. The aim of the collaboration is the establishment of high quality international search reports and written opinions. The Pilot Project is already available for the applicants since the beginning of July 2018[1] and, for the time being, it involves no additional costs than the regular international search fees.

Restoration of right of priority[2]

As well known, the end of the priority year is a critical deadline; the general rule used to be: once missed, it cannot be restored. However, the Rule 26bis.3 PCT, in force since 1 April 2007 and slightly modified as of 1 April 2017, changes that principle to a certain extent. If the EPO is chosen as the receiving office (RO), restoration of the right of priority is feasible under certain conditions. The EPO applies the Rule 26bis.3 PCT in line with the principles of re-establishment of rights under Article 122 EPC.

The principle is specified in Rule 26bis.3 (a) PCT:

a) Where the international application 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 receiving Office shall, on the request of the applicant, and subject to paragraphs (b) to (g) of this Rule, 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: (i) occurred in spite of due care required by the circumstances having been taken; or (ii) was unintentional.

As specified in the following subparagraphs. Most importantly, a request is to be filed within two months from the date on which the priority period expired. A fee for restoration is to be paid (640 euro at the EPO) and a statement of reasons is to be furnished.

Restoration of right of priority at the EPO as receiving office

The EPO applies the due care criterion. The starting point is that the primary responsibility lies with the applicant. If an agent is hired, it must be shown that proper instructions were sent to the agent and that the agent applied due care by virtue of his responsibility. The standard of 'all due care' is therein well developed in accordance with the jurisprudence of the Boards of Appeal; as expertise entails a higher standard, failure to file within the priority period is only dispensed if it is caused by an isolated mistake within a normally satisfactory system for monitoring time limits or by an exceptional circumstance. Where an isolated mistake was made by an assistant, it must be shown that the assistant is a suitable person well selected for the task, properly instructed and reasonably supervised by the responsible agent. Notwithstanding, the due care must not be interpreted in an excessive manner and the reference is an average, reasonably competent applicant and agent[3].

Consequences for the national phase

In the national phase, designated offices normally accept restorations granted when the 'all due care' principle is applied. There are two exceptions, namely that (i) 15 designated offices notified incompatibility with national law and thus do not apply the provisions on restoration of the right of priority, and that (ii) a designated office may review the decision of restoration if it reasonably doubts that one of the substantive requirements for restoration is complied with.

On the other hand, if a Receiving Office grants restoration according to the 'unintentionality' criterion, this decision will only be effective in the designated offices applying this criterion. Thus, if a designated office does apply the 'all due care' criterion, priority will not be considered to be restored.

Restoration at the request at the EPO as designated office

A new request for priority restoration must be filed upon entry into the European phase, when either (i) no request was filed during the international phase, or (ii) the request was granted under the 'unintentional criterion' or (iii) the receiving office refused the request. The requirements for filing this request are set out in Rule 49ter.2 PCT. In addition, the EPO as designated office may review a decision to restore when it has reasonable doubts as to whether one of the substantive requirements for restoration was complied with.

Earlier start of International Preliminary Examination

The final part of the presentation by Mrs Auría Lansac was dedicated to prospective changes to the PCT legal framework and, in particular, to the proposed amendments to Rule 69.1(a) PCT as approved at the last meeting of the PCT Working Group.

International Preliminary Examination must be requested by filing a demand within the deadline foreseen in Rule 54bis.1 PCT. However, under current Rule 69.1(a) PCT, International Preliminary Examination shall not start until the expiry of the time limit for filing the demand, even if the demand was filed well before the expiry of the deadline contained in Rule 54bis.1 PCT, unless the applicant expressly requests an earlier start.

The latter prohibition does have some drawbacks, as it reduces the effective period for the preliminary examination and thus the time for drafting a second written opinion. In fact, considering that the International Preliminary Examination Report must be ready at 28 months from priority, this leaves only six months for the preliminary examination.

The proposal is therefore to remove the said prohibition and to introduce a systematic earlier start of the International Preliminary Examination, unless the applicant expressly requests to postpone the start until the expiry of the deadline for filing the demand. This will allow more time for dialogue between the applicant and the examiner and therewith higher chances to obtain a positive IPER. It is the hope that the Chapter II procedure will therewith become more even more attractive and useful. The proposed amendments to Rule 69.1(a) PCT will be submitted to the PCT Assembly at its next session in Autumn 2018.

O. Boncea (RO), oboncea@rominvent.ro

  1. See Information from the EPO in EPO OJ 2018, A47
  2. This summary is based on the presentation given by Isabel Auría Lansac.
  3. For further details, see paragraphs 166A to 166T of the PCT receiving office guidelines PCT/GL/RO/17 available at http://www.wipo.int/export/sites/www/pct/en/texts/pdf/ro.pdf