Reinstatement of rights of an applicant after failure to enter into the national phase

According to PCT Article 24(1)(iii), if the applicant fails to perform the acts referred to in PCT Article 22 or Article 39 (1) within the applicable time limit (i.e. either within 30 or 31 months) the international application will cease to have effect in any designated State with the same consequences as the withdrawal of any national application in that State.

Article 22 or Article 39 (1) requires an applicant to furnish following acts/things in common:

(a) a copy of the international application and a translation thereof (as prescribed) [not necessarily everywhere];
(b) submission of required national fee;
(c) requisite information as to applicant/inventor to file a national phase application.

How to get an application (international PCT application) for patent reinstated/revived:

If the national law of a designated State provides for excuse of delay in respect of national applications, it will be possible, under PCT Article 48(2) for the Office to excuse, for reasons admitted under its national law, any delay in meeting any time limit also in respect of international applications.

All national provisions related to the excusing of delay are generally applied to international applications in the same way and under the same conditions as they are to national applications. Examples of such provisions are those that allow reinstatement of rights, restoration, restitutio in integrum, revival of abandoned applications, further processing, continuation of proceedings, and so on.

In other words, if a procedure for reinstatement of rights is in place in any of the designated States in which one wish to enter the national phase, it must be applied to international applications which have ceased to have effect in those designated States because the time limit to enter the national phase was missed.

Article 48(2) provides that:

(a) Any Contracting State shall, as far as that State is concerned, excuse, for reasons admitted under its national law, any delay in meeting any time limit.\

(b) Any Contracting State may, as far as that State is concerned, excuse, for reasons other than those referred to in subparagraph (a), any delay in meeting any time limit.

A person may also be able to reinstate his application in certain designated Offices by using PCT Rule 49.6 which entered into force on January 1, 2003.

Under this rule, the majority of the designated Offices are required to provide the possibility to reinstate the rights of the applicant with respect to an international application where the applicant failed to comply with the requirements laid under PCT Article 22 or 39.1. The excusing of a delay is understood as any decision which has the effect of the international application being treated as if the time limit had not been missed. The condition laid down by the national law of each designated offices are decisive in determining whether a delay must be or may be excused. The Offices concerned will, upon request of the applicant, reinstate the rights of the applicant in respect of that international application if they find that the delay in meeting the time limit was:

(i) was unintentional; or

(ii) was at the option of the designated Office.

(iii) occurred in spite of due care required by the circumstances having been taken.

We can correlate options (i) and (iii). These two somehow indicates the absence of intention or deliberation to enter into any national phase on the part of the applicant and/or agent of the applicant. Option (iii) indicates the lacuna to file an application which has been created by the designated office to be entered and in that case if such office is satisfied with the reasons that the applicant can not be held responsible for the failure, such offices will reinstate the application.

According to PCT Rule 49.6(b) and (c), the request to reinstate an applicant rights should state the reasons for failure to comply with the applicable time limit and fulfill the requirements therewith under PCT Article 22, which should be submitted to each designated Office concerned. The acts referred to in PCT Article 22 should be performed within whichever of the following periods expires first:

(A) two months from the date of removal of the cause of the failure to meet the applicable time limit under Article 22; or

(B) 12 months from the date of the expiration of the applicable time limit under Article 22;

Apart from these time limits the applicant may submit the request at any later time if so permitted by the national law applicable by the designated office. (…This is proviso….)

In majority of cases the issue of reinstatement revolves around only one question i.e., what is the cause of failure to enter into separate national jurisdictions? Does it fall under point (i) and (iii) discussed above? Burden lies only on the applicant and he can be rescued or his application be revived only if the applicant comes clean with substantial proof/reasons evidencing the fact that the delay was unintentional on his part or better say fulfill above discussed point (i) and (iii).

Now presuming a situation where an applicant has failed himself to enter into a national phase of concerned office. There are following important elements to be taken care of –

(a) Cause of failure – must be of the nature as described in point (i) and/or (iii) discussed earlier, we have to evade point (ii). Now suppose one fulfills the requirements of (i) and/or (ii),

(b) Removal of such cause of failure – concerned designated office has to be impressed/satisfied with the reason shown alongwith the necessary evidence resulting into the grant of the request to reinstate.

(c) Period of two months – applicant has to fulfill all the requirements of Art. 22 to enter into national phase within two months from the date of grant of request to reinstate issued by the concerned designated office.

Here we are, the application in question is reinstated in the national phase of that concerned designated office. This is the way and the wholesome idea to proceed further.

Now an open question – what could be considered an unintentional delay: This is more or less a question of fact. Absence of intention/deliberation, something where intention is missing or absent. Let me illustrate an example of unintentional delay : suppose an applicant has entrusted all the responsibility of his patent application to an agent who has to enter into national phase of a country on behalf of the applicant and has given all necessary instructions/information in this regard to that agent. Unfortunately after that, let us presume that the agent go bankrupt, loses control of his work/business. One more thing, due to peculiarity of the situation despite all the best efforts of the applicant, he loses control of the information relating to the status of his application. Then in this situation we can say that the delay on the part of the applicant is unintentional and he has every right to get his application reinstated.

Apart from this, Rule 49.6 (d) provides that certain designated Offices require the payment of a fee in respect of this request, and some may require a declaration or other supporting evidence. For example:

(1) Evidence by way of affidavits or statutory declarations or oral evidence;(2) Evidence that the lapse was unintentional on the part of the applicant or agent;(3) Evidence that no undue delay occurred before the request was made;(4) Evidence that due diligence and prudence was exercised on the part of the applicant or agent;
(5) Advertisement of the request and provision of a period for others to oppose the granting of the request;(6) Case laws supporting the decision to grant the request etc.

Some Offices that apply the “unintentional” standard simply require a statement explaining that the failure to meet the time limit was unintentional. The requirements of each Office, including the criteria for reinstating the international application depends on the local national laws of the offices concerned.

In this regard, a point worth notable is that PCT Rule 49.6 applies to both designated Offices (where the national phase is entered under Chapter I - i.e. within 20 or 21 months) and, by virtue of PCT Rule 76.5, to elected Offices (where the national phase is entered under Chapter II of the PCT i.e. within 30 or 31 months).

Now something interesting, some designated Offices have notified the IB under PCT Rule 49.6(f) that PCT Rule 49.6 is incompatible with their national law and thus that they are not obliged to reinstate rights under PCT Rule 49.6(a) to (e). Any reinstatement request sent to such an Office will be dealt with in accordance with the applicable national law, which may be more or less favorable than the provisions of PCT Rule 49.6. The Offices which have notified the IB of such incompatibility are as follows:

Canadian Intellectual Property Office
China Intellectual Property Office
Croatian Intellectual Property Office
European Patent Office
German Patent and Trade Mark Office
Intellectual Property Office of New Zealand
Intellectual Property Office (Philippines)
Japan Patent Office
Korean Intellectual Property Office
Latvian Patent Office
Mexican Institute of Industrial Property
Patent Office (India)
Polish Patent Office
United Kingdom Patent Office

Why these offices are not in line with Rule 49.6 because PCT Rule 49.6, is a rule being in the nature of a minimum obligation, an optional guideline not mandatory one to safeguard the interests of those honest inventors/applicants who somehow miss the time limit to enter due to valid reasons fulfilling the requirement laid down therein.

To be more precise, , designated Offices are free to implement provisions which are even more or less favorable than those provided by PCT Rule 49.6. Notably most of the designating offices listed above have national procedures in place for excusing delay.

For example: Canada – allows late entry upto 42 months under sub-section 58(3)(b) with payment of additional fee. Similarly;

New Zealand provides extension of one year under Section 93A of the New Zealand Patents Act, to file a convention application and for a late entry into national phase IPONZ (New Zealand) practice as established by Patent Office Practice Note No. 1997/2 in Journal 1413 provides the whole procedure.

European Patent Office (EPO) - Applications for restitutio in integrum are governed by article 122 EPC. Article 122 EPC states:

"The 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-á-vis the European Patent Office shall, upon application, have his rights re-established if the non observance in question has the direct consequence, by virtue of this Convention, of causing the refusal of the European patent application, or of a request, or the deeming of the European patent application to have been withdrawn, or the revocation of the European patent, or the loss of any other right or means of redress".

Applications must be filed in writing within 2 months from the removal of the course of non compliance with the time limit. The omitted act must also be completed within this period. The application is also admissible within the year immediately following the expiry of the unobserved time limit.

However, the requirement for establishing "all due care" is relatively strict in Europe. All due care can be established by showing firstly that the applicant has a system for observing time limits, which can be shown to be normally satisfactory. Secondly, if it can be shown that, in a normal satisfactorily operating system, there was an isolated mistake, then restitution will normally be allowed.

Where an applicant is represented by a professional representative before the EPO, a request for establishment of rights cannot be acceded to unless the representatives themselves shows that he (she) has taken the due care required by an applicant required under Article 122 (1) EPC (J0031/90, July 10, 1992).

At the same time – some countries have reservations and no procedure in place to reinstate an application, for example: India – we know that there are no provisions to reinstate, once a person miss the deadline to enter into national phase, he is finished.
The content of this post is based on the reference books and the contents available on the Internet. For a better understanding of the provisions of PCT referred to in here, I recommend the readers to visit the http://www.wipo.org/.