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PCT Time Limit and Priority Claim

If you miss filing a PCT application within 12 months from the filing date of an application to which you had intended to claim priority (i.e., priority application), what measures can be taken to preserve the priority rights?

Well, it so happens that if you file the PCT application within 14 months from the priority date, you can (a) include a priority claim in the PCT request or add a priority claim under PCT Rule 26bis.1 and (b) file a request to reinstate priority rights under PCT Rule 26bis.3.  The time limit for filing a request to reinstate priority rights is 14 months from the priority date.  The time limit for adding a priority claim to the international application is 16 months from the priority date.

If you didn’t know the above, you could find yourself in a quandary, as in the case of a fellow I’ll refer to as Joe.  I found this story about Joe in the December 2009 PCT Newsletter, although WIPO didn’t really call him Joe (but it’s nice for a fellow to have a name).

Joe filed a PCT application 6 days after the one-year anniversary of a priority application.  Thus, the filing date of the PCT application was well within 14 months from the priority date, and Joe could have added a priority claim and filed a request to reinstate priority rights.  Joe added a priority claim, most likely in the PCT request, but did not file a request to reinstate priority rights, not even after he received a notice from the receiving office that he could file a request to reinstate priority rights.  Joe had assumed that his priority claim would be disregarded and had not seen a point in filing a request to reinstate priority rights.  He also seemed rather happy that he’d have more time to attend to national phase entry.

Well, it so happens that under PCT Rule 26bis.2(c)(iii) a priority claim will not be void just because the applicant didn’t file the PCT application within 12 months from the priority date, provided that the applicant filed the PCT application within 14 months from the priority date.  Since Joe filed his PCT application within 14 months from the priority date, the IB recognized the priority claim and made all calculations of time limits from the priority date contained in the priority claim.  Somehow, Joe missed this and assumed that time limit calculations would be made from the filing date of the PCT application.  Joe ended up missing the 30-month time limit for entering the national phase in some PCT member states.  The PCT Newsletter made it clear that if Joe had wanted the time limit to be calculated from the PCT filing date, Joe should have filed a request to withdraw the priority claim within 30 months from the priority date under PCT Rule 90bis.3.