Influence of changes to the PCT Regulations on applicants (II)

 

The objective of this Rule is to allow a priority claim to an earlier filed application even if the international application is filed outside the priority year.

 

This Rule is applicable to the conditions that:

(1) request must be filed with the RO;

(2) maximum extension of priority period: two months;

(3) statement of reasons for failure to comply with the time limit;

(4) preferably accompanied by a declaration or other evidence to support such statement;

(5) where applicable, payment of the required fee. Currently, the fees charged by China’s SIPO as the receiving office is 1000 yuan.

 

Two possible criteria for restoration:
(1) failure to file the application within the priority period occurred in spite of due care required by the circumstances having been taken;

(2) failure to file the application within the priority period    was unintentional.

All Offices must apply at least one of these criteria and may apply both.

 

Currently, the request for restoration of the priority and the decision of reception shall be announced together with the international application. The effectiveness of priority by the Receiving Office is: Restoration for reason (1) should take effect in all of the designated countries; and restoration for reason (2) shall take effect in the designated countries adopting the same or more lenient standards.

 

China’s SIPO, as the Receiving Office, accepts the Rule for the following reasons: (1) though appropriate attention obligations have been taken, there is still a failure to meet the deadline for negligence, i.e. reasonable excuse. However, China’s SIPO, as the designated office, would be reserved for the Rule. This implies that when the PCT application using the Rule in the international phase enters the China national stage, China’s SIPO will not recognize the restoration of priority in the international phase.

 

With regard to the provision "The request for restoration of priority shall be included in the international application submitted by the applicant", the World Intellectual Property Organization (WIPO) amended the request for international application (PCT/RO/101). A format article is added at the VI column of the international application, i.e. "priority restoration". The applicant shall specify which priority is needed to restore. If the applicant would make use of this article, the new international application request (PCT/RO/101) which came into use on April 1, 2007 shall be applied.

 

 

Meanwhile, China's State Intellectual Property Office revised the statement for PCT applications entering the Chinese national phase of (PCT/CN/501), and added a VIII column for the applicant entering the Chinese national phase to specify the restored priority in the international phase. State Intellectual Property Office would not recognize this priority. If the applicant restores the priority according to the Rule 26bis 2 in the international phase, the PCT office will issue the notice of "The priority is regarded as not being required" after the application goes through the formalities of entering the Chinese national phase.

 

 

 

The main changes in the redrafted Rule 91 are: former “obvious error” becomes “obvious mistake”; and mistake must now only be obvious to “the competent Authority” and no longer to “anyone”. 

The Rule further clarifies that the following mistakes shall not be corrected as obvious mistakes:

(1) missing pages and parts in international application;

(2) mistake in the abstract;

(3) mistake in Article 19 amendments (excluding international preliminary examination office);

(4) and mistake in the priority claims if the correction causes changes in priority date. 

 

The Rule also provides that the time limitation for an applicant to submit a request to correct obvious mistakes is 26 months from the priority date. If the correction request is rejected, the applicant can also request the international office announce the correction request. The international office shall, in accordance with the applicant’s request made within 2 months after the rejection date and after the applicant pay the special fees, announce the request for correction, the reasons for rejection by the international office in charge and any of the simple and further comments by the applicant together. If the examination has already begun, the designated office shall not regard to the correction of obvious mistakes.

 

 

The international office must have in place a quality management system and internal review arrangements according to the common rules of international search and international preliminary examination.