J 13/16 - No reestablishment for restoration of right of priority
No priority...
In the present case, the appellant appealed against the decision of the Receiving Section by which the application was deemed not enjoy the right of priority since it was filed after expiry of the 12 month priority period, and by which the request to allow the applicant to submit a new request for restoration of priority was refused.
In the PCT phase, the USPTO acting as RO had previously granted the request for restoration of priority under the 'unintentional' criterion, but no valid request had been filed at the EPO as dO under Rule 49ter.2 PCT, i.e., within the 1 month of entering the regional phase before the EPO .
A question arising in the present case is whether reestablishment is available for the request for restoration of priority. Its (un)availability may not be immediately evident, as it is not explicitly ruled out by Art. 122(4), Rule 136(3) EPC. The Board, however, considers that the request for restoration of priority is 'perfectly comparable' to reestablishment in respect of the priority period, and thus that its reestablishment is ruled out by Art. 122(4) EPC.
See also catchword point 2.
Catchwords:
1. If, in the international phase, a receiving Office (RO) has restored a right of priority under the "unintentional" criterion of Rule 26bis.3(a)(ii) PCT, the restoration is not effective in proceedings before the EPO acting as designated Office, since the EPO applies the "due care" criterion (Rule 49ter.1(b) PCT). In such cases, within the period specified in Rule 49ter.2(b)(i) PCT, the applicant must file a (new) request for restoration of a right of priority under Rule 49ter.2 PCT with the EPO acting as designated Office. For the purposes of Rule 49ter.2 PCT, the request filed with the RO under Rule 26bis.3(b) PCT cannot be taken into account in the proceedings before the EPO acting as designated Office. (See points 3.2 and 3.3 of the Reasons)2. In proceedings before the EPO, re-establishment of rights under Article 122 EPC is ruled out in respect of the period under Rule 49ter.2(b)(i) PCT for filing a request for restoration of a right of priority. (See points 4.3 to 4.10 of the Reasons)