PCT Rule 26bis — Correction or Addition of Priority Claim (MPEP Coverage Index) – BlueIron IP
PCT Rule 26bis Correction or Addition of Priority Claim
This page consolidates MPEP guidance interpreting PCT Rule 26bis, including 48 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
Under MPEP PCT Rule 26bis, learn about the process for correcting or adding priority claims in international applications filed under the PCT. Key obligations include timely filing and compliance with specific regulations to ensure the restoration of priority rights.
What this section covers
- Requests to restore or add priority claims in an international application filed under the PCT are governed by PCT Rule 26bis and its implementing regulations, including 37 CFR § 1.55 and 37 CFR § 1.78.
Key obligations
- Timely filing of the request is essential; corrections or additions must be made within 16 months from the priority date.
- Provisional applications require a reference to be included, even if the right of priority is restored under PCT Rule 26bis.3.
- Priority claims must adhere to specific requirements, such as including the reference required by paragraph (a)(3) of this section.
Practice notes
- Ensure all necessary documents and evidence are included with the request to support the claim.
- Failing to timely file the request can result in loss of priority rights, so it is crucial to adhere to the 16-month deadline.
Official MPEP § 26bis — Correction or Addition of Priority Claim
Source: USPTOLast Modified: 10/30/2024 08:50:22
Rule 26 bis Correction or Addition of Priority Claim
26 bis.1 Correction or Addition of Priority Claim
- (a) The applicant may correct a priority claim or add a priority claim to the request by a notice submitted to the receiving Office or the International Bureau within a time limit of 16 months from the priority date or, where the correction or addition would cause a change in the priority date, 16 months from the priority date as so changed, whichever 16-month period expires first, provided that such a notice may be submitted until the expiration of four months from the international filing date. The correction of a priority claim may include the addition of any indication referred to in Rule 4.10 .
- (b) Any notice referred to in paragraph (a) received by the receiving Office or the International Bureau after the applicant has made a request for early publication under Article 21(2)(b) shall be considered not to have been submitted, unless that request is withdrawn before the technical preparations for international publication have been completed.
- (c) 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.
26 bis.2 Defects in Priority Claims
- (a) Where the receiving Office or, if the receiving Office
fails to do so, the International Bureau, finds in relation to a priority
claim:
- (i) that the international application has an international filing date which is later than the date on which the priority period expired and that a request for restoration of the right of priority under Rule 26bis.3 has not been submitted;
- (ii) that the priority claim does not comply with the requirements of Rule 4.10 ; or
- (iii) that any indication in the priority claim is inconsistent with the corresponding indication appearing in the priority document;
the receiving Office or the International Bureau, as the case may be, shall invite the applicant to correct the priority claim. In the case referred to in item (i), where the international filing date is within two months from the date on which the priority period expired, the receiving Office or the International Bureau, as the case may be, shall also notify the applicant of the possibility of submitting a request for the restoration of the right of priority in accordance with Rule 26bis.3 , unless the receiving Office has notified the International Bureau under Rule 26bis.3(j) of the incompatibility of Rule 26bis.3(a) to (i) with the national law applied by that Office.
- (b) If the applicant does not, before the expiration of the time limit under Rule 26bis.1(a) , submit a notice correcting the priority claim, that priority claim shall, subject to paragraph (c), for the purposes of the procedure under the Treaty, be considered not to have been made (“considered void”) and the receiving Office or the International Bureau, as the case may be, shall so declare and shall inform the applicant accordingly. Any notice correcting the priority claim which is received before the receiving Office or the International Bureau, as the case may be, so declares and not later than one month after the expiration of that time limit shall be considered to have been received before the expiration of that time limit.
- (c) A priority claim shall not be considered void only
because:
- (i) the indication of the number of the earlier application referred to in Rule 4.10(a)(ii) is missing;
- (ii) an indication in the priority claim is inconsistent with the corresponding indication appearing in the priority document; or
- (iii) the international application has an international filing date which is later than the date on which the priority period expired, provided that the international filing date is within the period of two months from that date.
- (d) Where the receiving Office or the International Bureau has made a declaration under paragraph (b) or where the priority claim has not been considered void only because paragraph (c) applies, the International Bureau shall publish, together with the international application, information concerning the priority claim as prescribed by the Administrative Instructions, as well as any information submitted by the applicant concerning such priority claim which is received by the International Bureau prior to the completion of the technical preparations for international publication. Such information shall be included in the communication under Article 20 where the international application is not published by virtue of Article 64(3) .
- (e) Where the applicant wishes to correct or add a priority claim but the time limit under Rule 26bis.1 has expired, the applicant may, prior to the expiration of 30 months from the priority date and subject to the payment of a special fee whose amount shall be fixed in the Administrative Instructions, request the International Bureau to publish information concerning the matter, and the International Bureau shall promptly publish such information.
26 bis.3 Restoration of Right of Priority by Receiving Office
- (a) Where the international application has an international
filing date which is later than the date on which the priority period
expired but within the period of two months from that date, the receiving
Office shall, on the request of the applicant, and subject to paragraphs (b)
to (g) of this Rule, restore the right of priority if the Office finds that
a criterion applied by it (“criterion for restoration”) is satisfied,
namely, that the failure to file the international application within the
priority period:
- (i) occurred in spite of due care required by the circumstances having been taken; or
- (ii) was unintentional.
Each receiving Office shall apply at least one of those criteria and may apply both of them.
- (b) A request under paragraph (a) shall:
- (i) be filed with the receiving Office within the time limit applicable under paragraph (e);
- (ii) state the reasons for the failure to file the international application within the priority period; and
- (iii) preferably be accompanied by any declaration or other evidence required under paragraph (f).
- (c) Where a priority claim in respect of the earlier application is not contained in the international application, the applicant shall submit, within the time limit applicable under paragraph (e), a notice under Rule 26bis.1(a) adding the priority claim.
- (d) The submission of a request under paragraph (a) may be subjected by the receiving Office to the payment to it, for its own benefit, of a fee for requesting restoration, payable within the time limit applicable under paragraph (e). The amount of that fee, if any, shall be fixed by the receiving Office. The time limit for payment of the fee may be extended, at the option of the receiving Office, for a period of up to two months from the expiration of the time limit applicable under paragraph (e).
- (e) The time limit referred to in paragraphs (b)(i), (c) and (d) shall be two months from the date on which the priority period expired, provided that, where the applicant makes a request for early publication under Article 21(2)(b) , any request under paragraph (a) or any notice referred to in paragraph (c) submitted, or any fee referred to in paragraph (d) paid, after the technical preparations for international publication have been completed shall be considered as not having been submitted or paid in time.
- (f) The receiving Office may require that a declaration or other evidence in support of the statement of reasons referred to in paragraph (b)(ii) be filed with it within a time limit which shall be reasonable under the circumstances.
- (g) The receiving Office shall not refuse, totally or in part, a request under paragraph (a) without giving the applicant the opportunity to make observations on the intended refusal within a time limit which shall be reasonable under the circumstances. Such notice of intended refusal by the receiving Office may be sent to the applicant together with any invitation to file a declaration or other evidence under paragraph (f).
- (h) The receiving Office shall promptly:
- (i) notify the International Bureau of the receipt of a request under paragraph (a);
- (ii) make a decision upon the request;
- (iii) notify the applicant and the International Bureau of its decision and the criterion for restoration upon which the decision was based;
- (iv) subject to paragraph (h- bis), transmit to the International Bureau all documents received from the applicant relating to the request under paragraph (a) (including a copy of the request itself, any statement of reasons referred to in paragraph (b)(ii) and any declaration or other evidence referred to in paragraph (f)).
- (h-bis) The receiving Office shall, upon a reasoned
request by the applicant or on its own decision, not transmit documents or
parts thereof received in relation to the request under paragraph (a), if it
finds that:
- (i) this document or part thereof does not obviously serve the purpose of informing the public about the international application;
- (ii) publication or public access to any such document or part thereof would clearly prejudice the personal or economic interests of any person; and
- (iii) there is no prevailing public interest to have access to that document or part thereof.
Where the receiving Office decides not to transmit documents or parts thereof to the International Bureau, it shall notify the International Bureau accordingly.
- (i) Each receiving Office shall inform the International Bureau of which of the criteria for restoration it applies and of any subsequent changes in that respect. The International Bureau shall promptly publish such information in the Gazette.
- (j) If, on October 5, 2005, paragraphs (a) to (i) are not compatible with the national law applied by the receiving Office, those paragraphs shall not apply in respect of that Office for as long as they continue not to be compatible with that law, provided that the said Office informs the International Bureau accordingly by April 5, 2006. The information received shall be promptly published by the International Bureau in the Gazette.
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