Issue 06/65 | November 27, 2006
Priority Claim Restorations — Update

1. In our recent Alert (06/57) which appeared in the APLF's October newsletter on the restoration of a priority claim in the UK, published in August 2006, we noted a potential ambiguity in the Sirna Therapeutics decision from the UK Patent Office (see the footnote of that publication).

2. The Hearing Officer's Obita Dictum in Sirna Therapeutics cast some doubt on whether or not the new law in relation to requests for late addition and late declaration of priority would be applicable to a PCT application (designating the UK). No decision was given on the point because it was not necessary to do so to decide the case in hand.

3. We have recently successfully restored a claim to priority for a client who, due to misunderstanding between a US associate and a Chinese associate, filed a PCT (US), designating the UK plus other countries, outside of the convention year. The PCT (US) should have claimed priority to an earlier Chinese application. In order to restore priority, steps were taken to enter the National Phase in the United Kingdom, and a requests for a late addition of priority under rule 6(2), and a late declaration of priority under rule 6A(2) were made in relation to the resulting UK patent application. Evidence supporting the requests was filed at the same time.

4. Subsequently, we have received an official confirmation from the Deputy Director of the Patents Legal Section of the UK Patent Office, that if there is an unintentional failure to file a PCT application (designating the UK) within 12 months of the earliest claimed priority date, but the PCT application is filed within 14 months of the earliest priority application, then, provided that the PCT application enters the UK national phase within 14 months from the earliest priority date, they will allow a request for a late declaration of priority (subject of course to compliance with the relevant legislative requirements).

5. It is worth noting that if a priority document has not been filed for the PCT application, (which is quite likely if the application is prima facie filed too late to claim priority), then UK rules also require a certified copy to be filed within 16 months of the priority date (extensible).

6. Further, changes to the PCT Regulations which will come into force on 1 April 2007 will make it possible to deal with late declarations of priority directly in the PCT system. Similarly, the European Patent Convention (EPC) will include provisions on late declarations of priority once EPC 2000 comes into force, which will be by 13 December 2007.

To discuss this topic further, please feel free to contact Suzanne Oliver (mail@hlbbshaw.com), at HLBBshaw, in Essex, UK.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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