Patent priority rights play a pivotal role in the protection process for inventions, however, securing and maintaining such priority rights can be complex. Patent applicants can find themselves unintentionally losing the priority right to their invention due to unforeseen circumstances, and whilst it may not be ideal, there are solutions that could lead to their reinstatement in certain situations.

Application

Patent priority rights grant applicants an exclusive right to file for patent protection for their invention based upon an earlier application filed by the applicant. Priority rights are facilitated in multiple areas through international treaties such as the Paris Convention and the Patent Cooperation Treaty (PCT), for example.

Some jurisdictions allow for the reinstatement of patent priority rights if the failure to meet deadlines and subsequent lapse of priority was due to "due care", or if the lapse of priority was due to "unintentionality." These jurisdictions typically include countries that adhere to the Paris Convention for the Protection of Industrial Property, however, specific criteria and procedures for reinstatement vary by jurisdiction. Due to the nuanced nature of priority restoration, it is crucial to consult the patent laws and regulations of each country for detailed information on the requirements and process for reinstatement of priority rights.

As per the PCT, in instances whereby a patent application possesses an international filing date later than the date the priority period lapsed, the applicant may request restoration of priority if done so within two months from the initial expiration date and if the Office finds that the correct criteria apply.

Grounds for reinstatement

Due Care

One available route for the restoration of priority is by applying for reinstatement based upon due care criteria. In the sphere of patent priority rights, due care refers to the level of responsibility and diligence expected from patent applicants in managing their applications and complying with relevant regulations and obligations. There are generally strict criteria which must be met in order to obtain reinstatement of a priority right via due care grounds.

If a lapse of priority is deemed to have occurred in spite of due care that a “reasonably prudent applicant would have taken” in the patent application process, the priority rights may be restored for an applicant by an IP Office.

In order to meet the standards for due care criteria for the reinstatement of priority rights, patent applicants must demonstrate that they have met a series of high standards as it is not sufficient for an applicant to simply demonstrate that they had generally taken precautions to adhere to time limits, for example.

Instead, the applicant should demonstrate that they exercised complete due care for the entire application, with the Receiving Office assessing all factual elements of the applicant's actions pertaining to the filing of the international application up to the expiration of the priority period. Any actions taken by the applicant after the expiration of the priority period will not be taken into consideration when determining whether the applicant took all actions necessary to demonstrate due care.

Due Care Criteria

The criteria that will typically be examined by an IP Office in order to establish that an applicant took all due care in order to reinstate a priority right include:

1. Lack of Knowledge by the Applicant
2. Lack of Financing by the Applicant
3. Human Error by the Applicant or Agent Himself
4. Miscommunication between the Applicant and the Agent
5. Absence from the Office by the Applicant or Agent
6. Human Error by the Agent’s or Applicant’s Staff
7. Docketing System Error
8. Facsimile or Software Submission Failure
9. Postal Service Difficulties
10. Force Majeure

The IP Office will factually analyze each of these criteria in accordance with the requirements and in comparison to what actions they would deem a “prudent applicant” would have made in order to have complied with the due care criteria.

Unintentionality

The Unintentionality Criterion is another possible route for the reinstatement of priority rights, and overall the requirements for the meeting of such criteria are less stringent than those needed to prove due care was taken by an applicant.

Overall, a Receiving Office should restore a priority right if it is found that any failings on behalf of the applicant to file the international application within the set priority period was unintentional. In order to meet this criteria, an applicant must be able to demonstrate that they did not deliberately refrain from filing the international application within the priority period and that they had every underlying intention to file within the priority period.

Unintentionality Criteria

Some of the most common circumstances that apply for the unintentionality ground for reinstatement of priority include:

1. Lack of awareness
2. Misunderstanding of the law
3. Reliance on incorrect information

In essence, the focus on whether the applicant should meet the unintentionality criteria or not should lay upon the Receiving Office’s assessment as to the applicant's intent at the expiration of the priority period, regardless of their intent before or after the priority period.

Statement of Reasons

Whether an applicant intends to rely on the due care or the unintentionality criteria in order to apply for the reinstatement of priority rights, the applicant is required to set forth to the Receiving Office the reasons why the application was not filed within the established period. These reasons should be submitted in the form of a “Statement of Reasons.”

With regard to said statement in relation to the due care criterion, it should contain a detailed description of all facts and circumstances that amounted to the late filing of the international application past the priority expiration. Further, the statement of reasons in relation to due care grounds for reinstatement should also depict any remedial steps or alternative remedies that the applicant sought in an attempt to file the application within the priority period.

If the grounds for reinstatement are based upon the unintentionality criterion, the statement of reasons should detail that any failure to comply and submit the international application within the assigned priority period was entirely not intentional. Should the Receiving Office not find the statement of reasons sufficient, they may invite the applicant to submit a revised statement.

Moreover, supporting evidence will assist alongside the Statement of Reasons in demonstrating that the lapse of priority for an applicant should be reinstated based on either the due care criteria, or the unintentionality criteria.

Overall, reinstatement of priority owing to grounds of due care is a more strict criterion that focuses on the proactive measures taken by individuals or entities to prevent intellectual property infringement, whilst the unintentionality criterion is typically more flexible.

In amongst the nuances of priority reinstatement regulations, there is hope for applicants who may have lost patent priority rights. If you are interested in learning more about the possibilities of reinstating patent priority rights, or if you would like our assistance with your matter, contact us via our social media or website at https://www.ip-coster.com!

According to Article 115 of the European Patent Convention, any person can submit their observations regarding a European patent application, or a European patent pending before the European Patent Office (EPO), in order to contribute relevant information to the examiners at the EPO. Such submissions are called third-party observations (TPOs) and serve as a valuable tool in the patenting process.

TPOs have an accelerating effect on a patent application. Submitting non-anonymous, well-supported observations pursuant to Article 115 and Rule 114 EPC substantiating a lack of patentability during examination can expedite the next Office Action from the EPO. This mechanism differs from the submission of a PACE request, as it only accelerates the next substantive communication from the EPO.

TPOs, which are sent to both the examiner and to the applicant for consideration and comment, not only help to prevent a patent from being wrongly granted, but can also lead to the amendment of patent claims. s Alongside the possibility of amendments to the patent claims, a TPO may also result in the granting of a patent with a lesser scope of protection.

Third-party observations can relate to patentability, novelty, inventive step, sufficiency of disclosure, lack of clarity, or amendments that are not allowed as per the rules. Observations must be filed while the proceedings are still ongoing to effectively influence the examination. TPOs filed after a patent has already been granted will be neither considered nor made available for file inspection.

TPOs are typically submitted using an online form via the EPO website, with no official fee required to be paid for the submission. They must be filed in one of the official languages of the EPO (English, German or French) and explain the grounds on which they are based. The supporting documents may be filed in any language, although the EPO may request the translation within a prescribed time period.

TPOs may be submitted anonymously, yet it is important to note that the submitting party mustn't already be a part of the proceedings and are not permitted to join the proceedings following the filing of the TPO. The EPO will not directly inform the filing party of any further action that was taken in response to their TPO, however the outcome will be confirmed in the office actions and published by the EPO.

Third-party observations are important in ensuring that the patent examination process is strong and accurate. By welcoming contributions from external parties, the EPO gains diverse knowledge and expertise, enhancing the examination process and making sure that granted patents meet high standards within the European Union.

The European Union Intellectual Property Office (EUIPO) is a regional IP office and European Union Agency founded in 1994, located and headquartered in Alicante, Spain. As such, the EUIPO facilitates the protection of European Union trademarks (EUTM), formerly a "community trade mark", as well as Registered Community Designs (RCD). An alternative name for the EUIPO is in the French language, namely “Office de l'Union européenne pour la propriété intellectuelle”.

The office was founded and operates on the basis of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark. As an international hub for intellectual property matters, the office operates in five working languages, namely English, French, German, Italian and Spanish. Applications received by the EUIPO can be processed in the twenty-three official languages of the EU.

Registered Community Designs, as well as EU trademarks registered through the EUIPO, benefit from unitary protection effect across all EU Member States. Registered trademarks and designs with the EUIPO are published and the information made publicly available in the corresponding IP registers managed by the office. The Register of European Union trademarks, for example, contains particulars of all EU trademark applications and registrations, whilst the Community Design Register contains information pertaining to registered EU designs. Both of these registers are continually updated to track any amendments to EUTM's or RCD's such as ownership information and licencing.

The EUIPO also publishes the EU Trade Marks Bulletin and Community Designs Bulletin containing said registrations, as well as other relevant information available to the public.

In addition to facilitating the registration of RCD's and EUTM's, the EUIPO also maintains the Orphan Works Database, providing access to information relating to orphan works contained in the collections of publicly accessible forms such as educational establishments and archives in Member States.

Furthermore, the office oversees the Observatory on Infringements of Intellectual Property Rights, aiming to assist in the fight against counterfeiting and piracy by raising public awareness through the encouragement of best practices and cooperation. The EUIPO has overseen both Orphan Works and the Observatory of Infringements since 2012.

The EUIPO is a vital IP office for the facilitation of intellectual property throughout the European Union, with the office examining over 150,000 EUTM applications and 90,000 RCD applications every year. Moreover, the office allows for a multitude of international cooperations and initiatives spanning across the globe, aligning with the European Commission external actions policy priorities. As such, the EUIPO aims to create awareness on the benefits of IP protection and registration, encouraging innovation as a source of economic development across the EU.

Furthermore, the office supports the development of the administration of IP and enforcement services by modernizing legislation and promoting participation in international IP Treaties. Through Memoranda of Understanding (MoU), the EUIPO forges collaborations with other IP offices directly, identifying actions that can benefit the IP field in EU Member States and the IP sphere on a global level.

The EUIPO also engages in the TM5, consisting of five major IP offices for trademarks, and the ID5, comprising five major IP offices for industrial designs. These five offices include the CNIPA, EUIPO, JPO, KIPO and USPTO in close collaboration with the World Intellectual Property Organization (WIPO).

The EUIPO serves as a focal point for not only the European IP sphere, but for IP protection on a multi-regional level too.

The European Patent Office (EPO) is a regional intellectual property office which contributes to a unified patent system across member states, streamlining the process for the protection of patents across the region. It is headquartered in Munich, Germany, with several other branch offices present in cities across Europe.

The EPO is the executive arm of the European Patent Organisation, an intergovernmental structure established on October 7, 1977, on the basis of the European Patent Convention (EPC) signed in 1973. The organization has grown to include all 27 member states of the European Union, alongside other non-EU states, bringing the total number of EPO member states to 39 inclusive of 44 respective countries.

The EPO operates alongside the EPC, a treaty which provides a legal framework for the granting of European patents by way of a single, harmonized procedure before the EPO. This mechanism allows the EPO to function as a centralized patent office for European member states, allowing applicants to file for protection of their inventions via a more simplified route when compared with filing for patent protection separately in each respective country. As such, the EPO plays a pivotal role in the intellectual property field of the region.

The EPO operates in three official languages, namely English, French and German, and patent applications may be filed in any of the three official languages.

One of the core functions of the EPO is to provide for the examination and granting of patents for inventions, with examiners from the Office assessing applications as per the necessary criteria such as a patent possessing novelty, industrial applicability and an inventive step.

Further establishing its role in the international IP landscape, the EPO is also actively involved in multiple international patent co-operations, with the office notably constituting one of the members of the Patent Cooperation Treaty (PCT). The PCT streamlines the process for the filing of international patent applications and facilitates the exchange of information and prior art. Moreover, the EPO has forged further collaborations with approximately 75 IP offices and regional IP organizations across the globe.

The Office has also formed cooperative validation agreements with five non-member states, namely Cambodia, Georgia, Moldova, Morocco and Tunisia. These agreements allow applicants to file for patent protection via the harmonized procedure before the EPO as they would when seeking patent protection in member states (either directly or via the Euro-PCT route), however applicants may request patent validation in the 5 aforementioned states despite them being non EPC members. The validation of a European patent in such states will have the same effect as a national patent would in each state respectively, and is available upon paying the corresponding fee.

Applications for patents in validation states are subject to the national laws of each respective state, however the state itself will not conduct examination, with the examination results conducted by the EPO being utilized instead.

The EPO plays an important role in the IP sphere on both an European regional level, and on an international level. Beyond its patent granting function, the EPO supports innovation by providing access to extensive patent databases and resources. As well as applicants and inventors, others such as researchers and policymakers can utilize data produced by the EPO to analyze and monitor patterns and trends in the field of technology to make informed decisions with respect to their patent portfolio, prospective applications, and future innovation.

Further, the work produced by the EPO and the quality of examination of patents has a direct impact on economic development and innovation in Europe. The EPO therefore aids in facilitating the encouragement of investment in research and development, fostering economic growth and technological advancement in the European region.

If you are interested in filing for patent protection by way of the EPO or Euro-PCT, or simply would like to learn more, contact us via our website or social media platforms.