PCT Restoration of the Right of Priority - The Indonesian Position ( IP Updates 001/11 )

According to the Regulations of the PCT, it is possible for an applicant who missed the priority deadline for filing the international application to still file the PCT application using the lapsed priority within two months after the priority deadline actually ends. A procedure titled Restoration of the Right of Priority is thus available under Article 26bis.3 of the Regulation and may be invoked by request of the applicant, provided that the applicant can sufficiently prove that the miss occurred after due care required by the circumstances has been taken, and/or the miss occurred unintentionally.

Each receiving office and designated country office, however, according to Articles 26bis.3 paragraph (j) and 49ter.2 paragraph (h) respectively, reserves the right to not reconize the Restoration procedure within its jurisdiction if the office considers that such procedure is not compatible with its national law.

This is actually the case with the Indonesian Patent Office either as Receiving Office or as Designated Country Office. While allowing late filing to the Indonesian National Phase subject to payment of surcharge, the Directorate of Patent of the Directorate General of Intellectual Property, has decided not to recognize any Restoration of Priority Rights invoked by incoming PCT applications to Indonesia.

This position has been submitted accordingly to the WIPO followed by subsequent publication in the PCT Gazette of September 2009 edition.

The office considers that such leniency is not compatible with the standard of protection set under the Law no.14 of 2001 concerning Patent, a position that is likely to remain unchanged should the law be amended with the Revision Bill currently under discussion.

One problem is that there is no measure applied by the Patent Office to detect any invoked Restoration during the pre-filing stage of the national phase, thus preventing submission of the application in question and payment of the filing fee beforehand. Restoration of Priority Right will only be detected during the Formality Examination stage, at which point the office shall declare the application as formally withdrawn without possiblity to refund the already-paid filing fee.

Accordingly, it solely depends on the applicants and their Indonesian legal proxy to determine on whether or not the priority right has been restored before deciding to proceed with the Indonesian national entry.

(amr – ps/eb)