By Christopher P. Singer —

As previously reported on Patent Docs, the PCT has amended portions of its Regulations, effective on April 1, 2007.  Most notably, the amendments provide: (a) a way for an applicant to request that the right to claim priority be restored in applications that meet specific requirements; (b) a way to insert a missing portion of an international application without losing the international filing date; and (c) a clarification about the circumstances in which an obvious error in an international application can be corrected.  The U.S. Patent and Trademark Office (USPTO) also proposed amendments to 37 C.F.R. that conform with these changes to the PCT Regulations.  However, because the changes to the PCT Regulations take effect prior to the effective date of the proposed rule changes in the U.S., the USPTO has announced the interim procedures it will follow until the rule changes are final.

In a March 30, 2007 Official Gazette (OG) Notice, the USPTO announced that it will use the general authority granted under 35 U.S.C. 364(a) to implement the changes relating to inserting a missing portion of an international application without the loss of the international filing date and the circumstances and procedures for correcting an obvious mistake.  The USPTO will use 37 CFR 1.182 for requests relating to the restoration of the right of priority.  Anyone wishing to attempt to make a request for restoration of the right of priority is urged to carefully review the requirements for a grantable petition (including timeliness, fees, notices, and required statements).

Practitioners with questions regarding the notice and these procedures are directed to contact Mr. Richard R. Cole, Senior Legal Examiner with the Office of PCT Legal Administration by telephone (571.272.3281) or fax (571.273.0459).