Turning Back the Clock

Vera Vallone

When obtaining patent protection not only in one but several territories around the world, an applicant usually starts with a national application to secure the priority date (e. g., where the applicant is based), which is then followed by an international PCT application covering the territories chosen by the applicant. This second PCT application generally must be applied for within 12 months from the date when the first national application was applied for.

If the application includes a European Patent («EP») regional phase application, the following deadlines must be kept in mind: The general deadline for the entry into European phase is 31 months from the date of the first filing (the priority date). If this deadline is missed, the applicant must, to restore the priority right for an EP regional phase application, file a request for restoration with the EPO within one month after the missed 31-month deadline for regional phase entry with a valid reason.

Depending on the territories where patent protection is then ultimately pursued from the PCT patent application, different approaches are used to assess the valid reason to request &cbr;the restoration of the priority right. The PCT Rules provide for the restoration of the priority right if the applicant can excuse the delay for entry into regional or national phase, if the delay has occurred either in spite of all due care required by the circumstances having been taken («all due care test») or if the delay was unintentional («unintentional test»).

|For several jurisdictions the «unintentional» test is sufficient; however, the EPO uses the more stringent «all due care» test, which it applies strictly. Thus, depending on the territory, the «unintentional» or the «all due care» test requires a different threshold of what must be shown to obtain the restoration.

The «all due care» test is based on Art. 122(1) EPC and states that: «An applicant for or proprietor of a European patent who, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis the European Patent Office shall have his rights re-established upon request if the non-observance of this time limit has the direct consequence of causing the refusal of the European patent application or of a request, or the deeming of the application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress.» This means that the applicant must show that the deadline was missed in spite of all due care having been demonstrated under the circumstances.

The applicant in the case at hand applied for a PCT application based on a prior US application. The applicant missed the 12-month deadline and requested a restoration with the International Bureau of the WIPO, which granted such restoration for the PCT application. However, the applicant did not request restoration of the priority right with the EPO. Consequently, the applicant missed both (i) the deadline for entry into the European phase within the 31 months from priority date, as well as (ii) the deadline for restoration of the priority right of one month from the end of the 31-month deadline. Regarding the first deadline (the missing of the deadline for entry into the European phase), the EPC allows for a so-called «further processing» and as a result the application continues. However, this generally does not include the «further processing» with regards to the deadline to request restoration of the right to priority or, in the words of the BoA: «There is nothing in the law to indicate that the failure to observe the time limits under R. 159(1)(c) and (f ) EPC, and the subsequent remedying of this failure with the grant of further processing, could have an impact on the failure to meet the time limit under R. 49ter.2(b)(i) PCT.»

That became the relevant question before the Board of Appeal: Whether the granted processing for the deadline for entering the EP regional phase also affected the deadline for requesting restoration of the right to claim priority.

As the legal provisions (Rule 159(1)(c) and (f ) EPC; Rule 49ter.2(b)(i) PCT) do not contain any answer regarding the interaction between «further processing for regional phase entry» and «the deadline for requesting restoration of the right to claim priority», the BoA turned to the EPO Guidelines for Examination (hereinafter «Guidelines»). They indicate that the grant of the further processing for regional phase entry retroactively permits a late filing of a request for the restoration of the rights to priority.

However, the BoA noted that the EPO Guidelines are based solely on an «understanding» of the PCT rules which were adopted by the PCT Assembly on the interpretation of the PCT Rule relating to the restoration of a priority right (Rule 49ter.2(b)(i) PCT). «In the specific circumstances of this case, the PCT Assembly is to be considered the legislator as per the board’s understanding set out above.» However, «understandings» should not have the same legal effect as amendments to the Rules themselves, given that the access to «understandings» is limited. Thus, should the «understanding» be considered to interpret the PCT Rule as applied by the EPO?

The BoA in short said «yes»: «At least for the case in hand, however, the understandings of the PCT Assembly are to be taken into account in such a way that their content is considered when interpreting and applying R. 49ter.2(b)(i) PCT; after all, they were clearly conceived to be to the advantage of applicants who have missed the time limit for restoration of the priority right but whose rights with respect to the international application were reinstated. Under these circumstances, the applicants’ legal position would not have been impaired, even if they had been completely unaware of these ‹understandings›.»

The BoA thus found that the request for restoration had been timely filed: «Put another way, in the circumstances of the case at issue, further processing (or the granting of further processing) ‹turns back the clock› so as to re-open the possibility for a request for restoration for which the time limit had already been missed.»

Turning back the clock on the deadline for a restoration request does not relieve the applicant from the duty to show to the BoA that all due care had been taken by the applicant and their representative.

The applicant then argued that the US attorney who advised their client was only considering jurisdiction where the «unintentional» test would apply. That the application would also include an EP application was only agreed at a later stage. Thus, the advice of the US attorney would have been within the criteria of «all due care».

|The BoA in short held that the US attorney should not have gone on a weekend trip without access to e-mails without final confirmation of the client’s instructions. Also, the US attorney should have considered the «all due care» test for other jurisdictions and advised the applicant accordingly. The lack of care regarding the deadline of the priority claim led to the result that the test was not met by the applicant’s representative and thus, the appeal was dismissed.