Restoration of the right of priority in the international phase and the effects before the EPO (Decision J10/17)
The PCT Regulation allow, according to Rule 26bis.3, two criteria for restoration of the right of priority by the Receiving Office, namely that the failure to file the international application within the priority period (i) occurred in spite of due care required by the circumstances having been taken; or (ii) was unintentional.
However, the EPO as Designated Office or Elected Office does only accept the "spite of due care" criteria. Thus, when the right of priority was restored in the international phase according to the "unintentional" criteria, a request has to be filed with the EPO within one month after the period according Article 22 to request a restoration of the right of priority according to the "in spite of due care required by the circumstances having been taken" criteria.
In the case J10/17 a PCT application was filed with the USPTO as receiving Office. As the international application was not filed within the priority period, the applicant submitted a request for restoration of the right of priority with the Receiving Office. The right of priority was restored according to the "unintentional" criterion.
After entry of the application into the EP phase, the Receiving Section issued a communication dated 4 June 2015 to the applicant that "No request for restoration of the right of priority has been filed  during the international phase". The Applicant informed the EPO that the request for restoration was granted by the receiving office and asked to confirm that the priority right is in force. The EPO issued subsequently a notification of loss of rights, because the decision of the Receiving Office was based on the criterion of "unintentionality" and this has no effect before the EPO and that no valid request has been filed within the time limit expiring on 9 June 2015.
The applicant argued that the fact that no request had been filed was due to the erroneous information of the EPO. The Board of appeal held the view that the communication of the EPO was not the direct cause of the loss of priority, as the applicant could not establish a link between the erroneous information and the loss of the priority right.
Thus, when entering the regional phase before the EPO, it is very important to assess whether a restoration has already occurred in the international phase and under which criterion. Further, the information regarding a lack of restoration provided by the EPO might be ambiguous and it might be not possible to rely on the EPO notification in this respect. In case during the international phase the right to priority has been restored, the EPO representative for filing should always be informed timely.