Don't Be An April Fool: PCT Rule Changes Effective April 1, 2007

    By Christopher P. Singer

A notice in the Federal Register published on Friday, February 16, 2007 announced certain rule changes to the Patent Cooperation Treaty (PCT) that will take effect on April 1, 2007.  The changes will (a) restore an Applicant's right to make a priority claim under certain circumstances, and (b) allow an Applicant to insert a missing portion of an application without the loss of filing date if certain conditions are met.  Portions of 37 C.F.R. likely amended by these changes include 37 C.F.R. §§ 1.17(t); 1.57(a)(2); 1.437(a)-(c); 1.445(a); 1.452(a)-(d) (to be added); and 1.465(b)-(c).  While the following provides a brief synopsis of the changes, more details can be found in the Federal Register notice.

Regarding the restoration of Applicant's right to claim priority under certain situations, international applications which have been filed between twelve and fourteen months after the priority date and in which the delay in filing the international application was either in spite of due care or unintentional, can now claim priority to the earlier filed priority document.  However, any restoration of this right of priority by the U.S. Receiving Office, or by any other Receiving Office under PCT Rule 26bis.3, will not entitle applicants to a right of priority in any national stage application (35 U.S.C. § 371) or in any application filed under 35 U.S.C. § 111(a), which claims benefit under 35 U.S.C. §§ 120 and 365(c) to an international application in which the right of priority has been restored.  Thus, the Applicant's right to priority will still be governed by whether they have satisfied 35 U.S.C. §§ 119, 120, and 365.  In such a situation, all PCT time limits (e.g., 30-month National Phase deadline) are calculated based on this claimed "priority date."

PCT Rules 4 and 20 have been amended to allow an "incorporation by reference" statement on the PCT Request Form, which provides the basis for the changes relating to inserting a missing portion of the application as filed without loss of the international filing date.  Applicants can rely on this statement to insert portions of the application that were missing at the time of filing.  The USPTO will grant international filing dates in accordance with PCT Rule 20 (and 37 C.F.R. § 1.437(b)).

No public hearing will be held relating to these rule changes, however the public can submit comments on these rule changes on or before March 19, 2007 to the following e-mail address: AC9.comments@uspto.gov.

P.S., As a point of clarification to the above post:  The changes taking effect are to the PCT Rules, which necessitates that portions of the C.F.R. be amended (as noted in the post) to reflect these changes as they apply to the U.S.  The rule amendments were originally announced in the PCT Gazette (Feb. 23, 2006, pp. 5496-541) and affect portions of PCT Rules 2 and 4.  More explanation to these changes can be found in the Gazette link.