Annex of circular C. PCT 1372

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unless the applicant requests otherwise, first apply the “due care” criterion, and only if this standard has not been complied with, apply the “unintentionality” criterion.

166I. Unintentionality Criterion. Under Rule 26bis.3(a)(ii), the receiving Office should restore the right of priority if it finds that the failure to file the international application within the priority period was “unintentional”. The applicant satisfies this criterion if he demonstrates that he did not deliberately refrain from filing the international application within the priority period and that he had a continuing underlying intention to file the PCT application within the priority period. The receiving Office should focus on the applicant’s intent at the time when the priority period expired, irrespective of any changes in the applicant’s intent before or after the expiration of the priority period.

166J. Due Care Criterion. Under Rule 26bis.3(a)(i), the receiving Office should restore the right of priority if it finds that the failure to file the international application within the priority period occurred in spite of “due care” required by the circumstances having been taken. Generally, the standard of having exercised “due care” within the meaning of

Rule 26bis.3(a)(i) can only be met if the applicant has taken all measures which a reasonably prudent applicant would have taken. In determining whether the applicant exercised the “due care” of a reasonably prudent person, the receiving Office considers the facts and circumstances of each particular case. It is not sufficient for an applicant to demonstrate that, in general, he has taken all precautions to adhere to time limits for filing international applications. Instead, the applicant must show that he exercised all “due care” for the particular application in question. The receiving Office should engage in a factual analysis of the applicant’s specific acts related to the filing of the international application up to the expiration of the priority period. Actions by the applicant after the expiration of the priority period should not be considered when determining whether the applicant exhibited “due care”.

166K.Where the applicant is represented by an agent, both the applicant and the agent must show that they exercised “due care” in order to satisfy the “due care” criterion (see Rule

90.3(a)). In such a case, the applicant also has to demonstrate prudent action in the selection, appointment and sufficient instruction of a qualified agent.

166L. For a corporate applicant or agent to satisfy the “due care” criterion, the applicant or agent generally must demonstrate that a reliable docketing, back-up and reminder system has been established, that reliable, adequately trained and supervised staff has used these systems and did not make mistakes in the past, and that the failure to file within the priority period in this particular case was an isolated incident. While the same standard cannot be expected from a small applicant or agent, such as an individual inventor or a small and medium enterprise, any applicant or agent is expected to set up an efficient and reliable reminder, supervision and back-up system which corresponds to best practices in the field. 166M. While each receiving Office must engage in its own case-by-case analysis for each restoration request, the application of the “due care” criterion to the following factual circumstances (based on the experience of the International Bureau) may be of assistance:

(a) Lack of Knowledge by the Applicant

A prudent applicant acquires the requisite knowledge of the PCT system in order to be

able to timely file a complete international application, and/or appoints a competent

agent to file on his behalf if the applicant lacks the requisite knowledge. An applicant who failed to file the international application within the priority period due to a lack of knowledge concerning the operation of the PCT system or concerning the 12 months priority period as set out in Article 4C of the Paris Convention generally did not act with “due care”.