Where the international application has an international filing date which is later than, but within two months of, the date on which the priority period expired, the applicant may request restoration of the right of priority with the RO. This request may be made directly on the request form (Box No. VI) or separately (either upon receipt of the information from the RO using Form PCT/RO/110, Annex B (see GL/PCT-EPO A-VI, 1.4(ii)) or on the applicant's own initiative).
A request for restoration of the right of priority is admissible if:
Where the applicant makes a request for early publication under Art. 21(2)(b), the request for restoration and the statement of reasons or evidence (Rule 26bis.3(b)(iii)), or any notice under Rule 26bis.1(a) adding the priority claim, must be filed, and the pertinent fee be paid (Rule 26bis.3(d); GL/PCT-EPO A-III, 4.6), before the technical preparations for international publication have been completed (Rule 26bis.3(e)).
The EPO as RO grants a request for restoration of the right of priority only if the due care required by the circumstances has been taken ("due care" requirement). To satisfy this requirement, the applicant must show to the RO's satisfaction that the failure to file the international application within the priority period occurred in spite of due care required by the circumstances having been taken. The standard of having exercised "due care" can only be met if the applicant has taken all measures which a reasonably prudent applicant would have taken. The statement of reasons accompanying the request should describe in detail the facts and circumstances that have led to the late filing as well as any remedial or alternative steps taken to attempt on-time filing of the international application. Due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system.
OJ EPO 2007, 692
GL/RO 166J -166M
The practice of the EPO as RO defines exceptional circumstances as ones that are unrelated to ordinary working procedures and arise either unexpectedly, as for example a sudden serious illness, or owing to some kind of upheaval, such as an internal reorganisation entailing a move. Whether exceptional circumstances occurred depends on the facts of the case, and the standard to be met for this is very strict. In particular, events of force majeure may be regarded as exceptional circumstances. An event of force majeure means an external, unforeseeable and/or unavoidable circumstance beyond the control of the applicant or agent. Disasters, such as hurricanes, volcanic eruptions, earthquakes, international conflicts and war, may be considered such events. Due care is generally regarded as having been taken if it is demonstrated that the consequences of the event could not have been predicted and/or avoided.
The assessment of whether the failure to file the international application within the priority period resulted from an isolated mistake within a normally satisfactory monitoring system depends, among other things, on the size of the company of the applicant or agent. The same standard of care as is required of the patent department of a large firm cannot be expected of an individual or a small applicant. In addition, a different standard of due care is required depending on whether the mistake can be ascribed to an applicant, an agent in charge or an assistant.
The EPO as RO considers the facts and circumstances of each particular case, applying the principles summarised in GL/RO 166J-166M. The case law established by the EPO boards of appeal (developed with respect to the re-establishment of rights under Art. 122 EPC) is also taken into consideration when assessing whether due care has been exercised in the respective case. See also GL/EPO E‑VIII, 3.2.
If the RO intends to refuse the request for restoration of the right of priority, as it finds that the statement of reasons is insufficient to determine whether the applicant has satisfied the due care criteria or that the due care criteria appear not to have been met, it invites the applicant to submit further evidence and/or observations on the intended refusal within a two-month time limit (Form PCT/RO/158). The RO explains in detail, in the Annex to Form PCT/RO/158, why it intends to refuse the request. After expiry of the two-month time limit, and taking into account the information available to it at this stage, the RO issues a decision to either restore the right of priority or refuse the request for restoration of the right of priority (Form PCT/RO/159).
The RO transmits a copy of all related documents received from the applicant to the IB (including a copy of the restoration request, the statement of reasons and any declaration or other evidence), except if it decides, either upon a reasoned request by the applicant or on its own motion, that (parts of) certain documents are not to be transmitted. In the latter case, the RO notifies the IB accordingly. If the RO receives a reasoned request from the applicant not to transmit (a part of) a document to the IB, but nevertheless decides to transmit that (part of a) document to the IB, it also notifies the applicant of this decision (relevant box in Form PCT/RO/159).
The RO takes the decision not to transmit documents to the IB if it finds that a document or part thereof meets the requirements of Rule 26bis.3(h-bis), namely that:
A document or part thereof does not "obviously serve the purpose of informing the public about the international application" if it is clearly irrelevant for the disclosure or assessment of the international application as such. Making a document or a part thereof available to the public would "clearly prejudice the personal or economic interests of a person" if it would be harmful to that person's specific and concrete personal or economic interests. A merely abstract prejudice to hypothetical personal or economic interests is generally not sufficient.
A decision by the EPO as RO to restore the right of priority will be effective before the EPO as designated Office and, as a general rule, in all designated Offices, unless the respective designated Office has submitted a notification of incompatibility under Rule 49ter.1(g).
PCT AG I 5.069