Oops! We’ve missed the Priority Deadline – Abaco Revisited

The case of Abaco Machines (Australasia) Pty Ltd, Re Patent Application [2007] EWHC 347 concerned an unfortunate group of Australian patent agents who managed to make a mess of a priority filing. In a cruel twist of fate, the case was heard in the UK only a few months before reforms of the Regulations of the PCT came into force that might have alleviated their errors.

Image: Francesco Marino / FreeDigitalPhotos.net

Original Facts of the Case

A Vietnamese priority application was filed on 7 January 2004. The applicants wanted to file a PCT application before the end of the priority year. The Australian patent agents mistakenly timetabled the end of the priority year as one of 14 or 17 January 2005; both dates being after the actual deadline of 7 January 2005.  The patent agents only began to prepare the PCT application on 8 January 2005 and by 13 January 2005 they had realised they had missed the 12-month priority window.

UK Decision

At the time, UK patent law allowed a request for a late declaration of priority under s.5(2B). A late priority claim could be made if, inter alia, a UK application was filed within two months of the expired priority period (i.e. by 7 March 2005) and it could be shown that the applicant’s failure to file the application was unintentional.

The Judge agreed with the hearing office’s finding that there was no unintentional failure to file a UK application, the failure related to a PCT application and the filing of the UK application was intentional based on this failure. At the time there was no mechanism to request a late declaration of priority under the PCT.

PCT Reforms

On 1 April 2007, Rules 26bis.3 and 49ter allowing the restoration of a priority right under the PCT came into force (see page 55 of this document).

Let us see what happens when we take the Abaco facts while adding 5 years to the dates:

Revised Facts

A Vietnamese priority application was filed on 7 January 2009. The applicants want to file a PCT application before the end of the priority year. The Australian patent agents mistakenly timetable the end of the priority year as one of 14 or 17 January 2010.  The patent agents only begin to prepare the PCT application on 8 January 2010 and by 13 January 2010 they realise they have missed the 12-month priority window.

What can we do?

1. Restore the right of priority upon filing the PCT application under PCT Rule 26bis.3:

  • As set out here, Australia as a Receiving Office (RO) under the PCT accepts requests for restoration of the right of priority under Rule 26bis.3. Hence, the Australian patent agents can file a PCT application with the Australian Patent Office (APO) as RO. The application must be filed, and the request must be made, within two months of the expiration of the priority period, i.e. by 7 March 2010.  The APO applies national standards relating to missed time limits (see page 7 of the AU PCT Guide), which are equivalent to at least the “unintentional” standard. The APO charges a fee for making the request. Prima facie it is likely the request will be accepted.
  • When the application enters the national phase in the UK, the UK Intellectual Property Office (UKIPO) should accept the late declaration under 49ter.1 (presuming the UKIPO does not dispute the APO’s findings). See paragraphs 6.26 and 13.73 of the UKIPO’s Formalities Manual.

2. Restore the right of priority upon filing the UK national phase application under PCT Rule 49ter.2:

  • File a Form 3 within one month of entering the UK national phase, together with a fee (£150) and evidence of the Australian agents’ errors. Prima facie, the facts would likely support a finding that the failure to file the PCT application was unintentional. Ideally, the evidence should be in the form of an affidavit or witness statement signed by the Australian agents.
  • This can also be performed if the RO were to refuse the restoration request.

There you go. Just one of the reasons why the world we live in today is not as bad as yesteryear.

[Photo with thanks to Francesco Marino / FreeDigitalPhotos.net]

One thought on “Oops! We’ve missed the Priority Deadline – Abaco Revisited

  1. See also this UKIPO Practice Notice from April 2007:

    Late declarations of priority on PCT applications

    From 1 April, the PCT Regulations allow an applicant to make a request for a late declaration of priority on an international application.

    Thus it is now possible for an applicant to request that their
    international application is given a priority date which is up to 14 months earlier than the date of filing. The request for a late declaration can be made either with the relevant Receiving Office in the international phase of the application or with each relevant designated Office in the national phase.

    A request in the international phase must be made no later than 14 months after the priority date concerned. So far as the UK Office is concerned in its role as a Receiving Office, the request for a late
    declaration can be made on the PCT request form (PCT/RO/101) or in writing, and must be supported by evidence that the failure to file the international application within 12 months of the priority date was
    unintentional. There is no accompanying fee.

    A request made in the UK national phase must be made within 1 month of national phase entry. The 1 month period is not extendable. Just as for domestic UK applications, a Form 3/77 and GBP £150 fee is required, as is evidence that the failure to file the international application within 12 months of the priority date was unintentional.

    It is possible to make a late declaration request on any international application which enters the UK national phase on or after 1 April.

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