The Patent Cooperation Treaty (PCT) system allows for the preserving of foreign patent rights if the PCT application is filed within twelve (12) months of the priority date of the parent application. Preserving priority is of the utmost importance, but what if a priority claim made in the PCT Request was incorrect or incomplete? Or, what if the PCT application wasn’t filed by the twelve-month deadline? Rule 26bis provides applicants with an avenue for making these corrections.
Rule 26bis.1-Correction or Addition of Priority Claim
When it is necessary to correct or add a priority claim to the filed PCT Request, applicants may refer to Rule 26bis.1. Under this rule, an applicant may correct a priority claim in, or add a priority claim to, the Request via a notice submitted to the receiving Office or the International Bureau within sixteen (16) months from the priority date. Note, however, that where the correction or addition would cause a change in the priority date, the deadline may be adjusted to sixteen months from the priority date as so changed. If there are multiple priority claims, the sixteen-month date is measured from the earliest priority date. In any case, the notice must be submitted within four (4) months from the international filing date, at the latest.
When taking advantage of Rule 26bis.1 it is important to remember that where the correction or addition of a priority claim causes a change in the priority date, any time limit which is computed from the previously applicable priority date and which has not already expired shall be computed from the priority date as so changed.
Rule 26bis.2-Defects in Priority Claims
If the applicant wishes to correct or add a priority claim to the filed PCT Request but has failed to submit a Rule 26bis.1 notice, applicants may still proceed under Rule 26bis.2 to request that the International Bureau publish information regarding the intent to correct or add a priority claim. The purpose of this publication would be to alert designated (or elected) Offices and third parties to the likelihood that a correction will be requested by the applicant in the national phase (and therefore that the priority date might change), while at the same time providing a basis to request such correction with local Offices in the national phase. To take advantage of Rule 26bis.2, an applicant must submit a request prior to thirty (30) months from the priority date of the parent application. Furthermore, the applicant’s request is subject to the payment of a special fee.
Rule 26bis.3-Restoration of Right of Priority by Receiving Office
When a PCT application was not filed prior to the twelve-month deadline refer to Rule 26bis.3. Remember that to validly claim priority of a parent application, an international application must always be filed within the priority period, which is twelve months from the filing date of the parent application. In the event this filing does not occur, Rule 26bis.3 allows applicants to request that the right of priority be restored. To take advantage of this Rule the applicant must file both the application and a petition to restore priority within two (2) months of the expiration of the priority period (or fourteen months from the priority date of the parent application, whichever is later). The decision to grant an applicant’s petition to restore priority depends on the applicant establishing that the “criterion for restoration” has been satisfied; namely, that the failure to file the international application prior to the twelve-month deadline occurred in spite of due care required by the circumstances having been taken; or was unintentional.
Be aware that PCT countries are not bound to adhere to every PCT rule. Even if the receiving Office restores the priority claim, the validity of that claim cannot be assured in the national phase.