1. What is the “priority date” of a patent application?

The Paris Convention for the Protection of Industrial Property provides a valuable tool for inventors seeking patent protection in multiple countries. One of its key features is the right of priority for patent applications. This system lets inventors file a single "first" application in one member country and then enjoy a grace period to extend their filing rights to other member countries.

How it Works:

Imagine you've developed a groundbreaking invention and want to secure patent protection in several countries. Under the Paris Convention, you can file your initial application in any member state, establishing your "priority date." This data acts as a crucial anchor, marking the moment your invention's novelty is established.

Now, you have 12 months to strategically decide which other countries you want to seek protection in. During this period, you can analyze market potential, research competitor activity, and finalize your strategy before filing subsequent applications in targeted countries. These subsequent applications, when filed within the 12-month window, will be treated as if they were filed on the same day as the original application, gaining valuable priority over any competing applications filed later for the same invention.

This priority status offers several advantages. For example, if another inventor files a similar application in a different country after your priority date, your application takes precedence, significantly increasing your chances of securing the patent. Moreover, any events that occur between the first and subsequent filings, such as the invention being published or publicly disclosed, won't affect the validity of your later applications.

Beyond Borders: International Options

The Paris Convention isn't the only game in town. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) extends similar priority rights to members of the World Trade Organization (WTO), even if they're not signatories to the Paris Convention. Additionally, inventors can leverage the Patent Cooperation Treaty (PCT), a special agreement under the Paris Convention. Filing an international patent application under the PCT grants an additional 18 months beyond the standard 12-month window to decide which countries to enter the "national phase" in, offering extra flexibility and time for strategic planning.

The Paris Convention's right of priority provides a powerful tool for inventors seeking international patent protection. By understanding its benefits and utilizing additional options like the PCT, inventors can effectively navigate the global patent landscape, maximizing their chances of securing valuable intellectual property rights for their innovations.

Remember: It's crucial to remember the crucial timelines. File your subsequent applications within the 12-month priority period or utilize the PCT to avoid losing out on priority and potentially jeopardizing your patent protection.

2. What does restoration of priority right for patent application mean?

While protecting inventions abroad, sometimes an unfortunate misstep might lead you to inadvertently miss the 12-month deadline for claiming priority under the Paris Convention. But fear not, the Patent Cooperation Treaty (PCT) offers a lifeline – "priority restoration." This nifty feature, available only for patents (not trademarks or designs), allows you to reclaim your precious priority date, even if it's slightly past the standard timeframe.

Think of it this way: you tripped and stumbled outside the priority window, but PCT throws you a rope to pull you back in. This "rope" comes in the form of Rules 26bis.3 and 49ter of the PCT Regulation. These rules say that an international patent application filed up to two months after the 12-month deadline can still claim priority, provided you convince the receiving or designated office with a compelling reason ("restoration criterion"). Essentially, different countries acting as these offices can choose to offer this two-month grace period.

So, remember – losing the initial one-year window isn't an automatic death sentence for your international patent aspirations. If you act swiftly within two months and present a convincing case, PCT can help you regain your footing and leverage that crucial priority date for your subsequent national phase filings.

3. How to request restoration of the right of priority?

you can request restoration both when filing the international application and up to two months after the priority period expires (thanks to PCT Rule 26bis.3(e)). Just make sure your application claims priority of the earlier application(s).

Now, how do you request this restoration? Two options exist:

At filing: Mark the appropriate box on the request form (PCT/RO/101) or use the ePCT filing system or PCT‑SAFE software. This is the simplest and fastest way.
Later: Within the two-month grace period, send a letter to the receiving Office requesting restoration.

While requesting restoration during the national phase before some Designated Offices is possible, doing it before the Receiving Office is generally best. It's quicker, cheaper, and often applies to the national phase as well.

Remember, acting swiftly and choosing the right path can help you reclaim your priority date and boost your international patent protection. Don't hesitate to reach out if you have any further questions about the restoration process!

4. What is the process for requesting restorations of priority?

The process for requesting restorations of priority is provided under PCT Rule 26bis3 with the following highlights:

(i) Restoration is subject to priority application(s) which was/were filed between 12 and 14 months before the international filing date;

(ii) A request for restoration must be filed no later than 14 months from the filing date of the priority application;

(iii) In support of the request to be filed within the time limit, a declaration or other evidence should be accompanied.

(iv) Consideration of the request and its relevant evidence will be at the discretion of the IP Office from the Receiving Office or Designated Office where the criteria will be applied in accordance to the requested Office.

(v) Successful requests will be advertised on the pamphlet and will include the details of the accepted criteria under new PCT Rule 48.2(a)(xi), (b)(vii), and (b)(viii). In addition, the International Bureau will publish Form PCT/RO/159 (Notification of Decision on request to restore the right of Priority) which will contain the decision of the Receiving Office and the criteria (i.e. “due care” or “unintentional”) applied by that office.

5. What documents must be included in a request for restoration of priority right?

In addition to a request for restoration, the following information must be provided, either in the same document as the request for restoration or in a separate document, as long as it is filed within two months from the date of the expiration of the priority:

an indication (e.g., on a cover sheet) of the international application number and international filing date (if known), the name(s) of the applicant(s) and agent, and the title of the invention;
details of the earlier application, the priority of which is being claimed, if they are not apparent from the request form;
the reasons for the failure to file the international application within the priority period (PCT Rule 26bis.3(b)(ii)) (“statement of reasons”);

5.1. Statement of reasons

How a statement of reasons is prepared may depend on the criterion applied by the Receiving Office to requests for restoration of the right of priority, i.e., in determining whether the failure to file the international application within the priority period: occurred in spite of due care required by the circumstances having been taken; or was unintentional.

5.2. The “due care” criterion?

To fulfill the "due care" requirement, the statement should provide a detailed explanation of the circumstances that caused the late submission of the international application, along with any corrective measures or alternative actions taken to ensure timely submission. Each Receiving Office may consider various factual circumstances on a case-by-case basis, such as the applicant's lack of knowledge or funding, human error by the applicant or agent, miscommunication between the applicant and the agent, mistakes made by the agent or the applicant's staff, errors in the docketing system, postal service difficulties, and force majeure.

5.3. The “unintentionality” criterion?

To meet the "unintentionality" criterion for failing to comply with the priority period, a simple statement indicating that the failure was not intentional may be sufficient for many offices. However, some offices may require a declaration that includes reasons for the failure, supported by evidence if necessary. To satisfy this criterion, the applicant must demonstrate that they did not deliberately refrain from filing the international application within the priority period and that they had a continuing intention to file it within that period.

If the Receiving Office determines that the statement of reasons provided by the applicant is not enough to assess whether the applicant meets the required criteria, they may request additional information. The Receiving Office will provide a detailed explanation in the Annex section of the relevant form, outlining why the statement was deemed insufficient. The applicant may also be asked to provide a declaration or other supporting evidence to strengthen their statement of reasons. The Receiving Office will specify a reasonable timeframe within which the applicant should provide the requested information, in which the applicant should provide the requested information.

6. Conclusion

The clock may have ticked past the Paris Convention's 12-month deadline, but your invention's journey across borders needn't end there. The PCT's priority restoration mechanism is like a hidden portal, a gateway to second chances and international patent glory. Within that two-month grace period lies the power to rewind, to rewrite the narrative where your missed deadline didn't spell doom.

Embrace this second chance. Follow the map laid out in this guide, navigate the intricacies of Rules 26bis.3 and 49ter with confidence, and submit your compelling case for restoration. With each step, remember – you're not just reclaiming a date on a calendar, you're reopening doors of opportunity, paving the way for your invention to shine on a global stage.

So, go forth, inventor! Let the knowledge gleaned from this guide be your compass. Seize the second chance, reclaim your priority, and watch your innovation blossom across borders, one protected territory at a time. The world awaits your groundbreaking invention, and now, with the PCT's magic touch, it's within your grasp.

If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.