PCT Changes for April 2007

Thanks to Bill Bennett at Pizzey's for sending us this message about the recent PCT Assembly Meeting resulting in the following changes will take effect from 1 April 2007:

RECTIFICATION OF MISSING PARTS

Under the new rules it will be possible to rectify the omission of missing part(s) without loss of the International Filing Date. However, it is essential that:

(a) the missing part(s) be fully contained in the priority document; and

(b) the PCT Request Form include a statement of incorporation of the priority document (the official forms, including those in PCT-Easy, will be amended prior to 1 April 2007 to include an appropriate statement); and

(c) the statement of incorporation must be confirmed by the applicant within 2 months of the International Filing Date (hence, it is necessary that the deficiency in the PCT filing be recognised within a short time after filing).

As an aside, it would appear to be prudent practice, as of 1 April 2006, to include a claim set in the priority document as insurance against the possibility that the claims may be inadvertantly omitted from the PCT filing.

RESTORATION OF RIGHT OF PRIORITY AFTER 12 MONTHS

Under the new rules, it will be possible to ask for a restoration of priority in circumstances where the applicant files the PCT application between 12 and 14 months after the earliest priority date. Thus, in effect, it will be possible to obtain up to a 2 month extension of the PCT filing deadline, provided one of two criteria are met. The application for restoration will need to be accompanied by a declaration establishing that the missed PCTdeadline was (a) "unintentional"; or (b) occurred despite "due care".

Note, however, that any restoration of priority granted by a Receiving Office/WIPO may not be recognised by national patent offices if the criterion of "unintentional" or "due care" is not recognised under relevant national law. It is observed here that more countries recognise "due care" than "unintentional" as a valid basis for extension. Accordingly, "due care" would be the preferred criterion to invoke, if available under the specific facts.

Given the uncertainty regarding the validity of any restoration of priority granted under the PCT rules, and given the possible fatal consequences if priority cannot be validly claimed, it will remain good practice to check with foreign counsel on a country-by-country basis if the normal PCT filing deadline is missed.

Further, it is noted that, if the PCT filing deadline is missed by more than 2 months, it may still be possible to file belated convention applications directly with the countries of interest, provided that those countries have extension provisions which remain operative after more than 2 months (note - both Australia and New Zealand fall into this category).

FOR FURTHER READING

The text of the changes as submitted to the PCT Assembly Meeting in September/October 2005 can be viewed at http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=48427