WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.
Action to be taken when an international application is transmitted by a non-competent receiving Office to the International Bureau as receiving Office for further processing
Q: I have filed an international application under the PCT and the receiving Office has notified me that the application has been transmitted to the International Bureau as receiving Office for further processing because it was not competent to receive the application. What do I need to do?
A: Where an international application is filed with an Office which acts as a PCT receiving Office but which is not competent to receive the application because of the nationality and residence of the applicant(s), the language in which the application was filed, or other reasons as agreed between the national Office and the International Bureau (IB), the safeguard procedure under PCT Rule 19.4 applies. Under that procedure, the application is then transmitted to the IB as a receiving Office (RO/IB) while the date of receipt at the non-competent Office will be preserved, and given as the international filing date provided that the necessary requirements under PCT Article 11 for according an international filing date have been fulfilled. This is a very useful feature of the PCT as the IB will act as receiving Office for residents and/or nationals of any PCT Contracting State, and the RO/IB will accept international applications in any language (subject to the subsequent furnishing of a translation where applicable – see below).
The transmittal of the international application to the RO/IB may be subjected by the national (or regional) Office to the payment of a fee equal to the transmittal fee (PCT Rule 19.4(b)), but other fees that you may have already paid, such as the international filing fee and the search fee, will be refunded by the national Office and you will have to pay the applicable fees (including a transmittal fee) to the RO/IB.
Upon receipt of the international application, the RO/IB will assign a new PCT application number (PCT/IB…./……) to the application. For the purposes of the payment of fees, the date of receipt of the application which triggers the one‑month time limit for payment is the date of receipt at the RO/IB (and not the date of receipt at the non-competent Office – see PCT Rule 19.4(c)). You will be notified accordingly by the RO/IB and you do not generally need to take any action before receiving from the RO/IB the notification relating to the new application number and the notifications usually issued by the receiving Office (for example, a notification concerning payment of prescribed fees, the according of an international filing date, any invitation to correct defects). At this time you may need to change the method of payment of the fees, for example, from the debit of a deposit account at the non‑competent receiving Office to ePayment at the RO/IB.
Although the RO/IB does not require that the applicant be represented by an agent, if any agent has already been appointed, in order to be entitled to practice in respect of an international application before the RO/IB, that person must have the right to practice before the national Office of, or acting for, a Contracting State of which the applicant is a resident or national (PCT Rule 83.1bis). For example, if there is a US agent who has erroneously filed an international application with the United States Patent and Trademark Office (USPTO) as receiving Office on behalf of an applicant whose State of residence and nationality is Brazil, that agent may not have the right to practice before the National Institute of Industrial Property (Brazil) and, if this is the case, would not therefore be entitled to practice before the RO/IB. The status of such a person would be changed ex officio by the RO/IB to a special address for correspondence (PCT Rule 4.4(d)), and, although that person would be able to make payments in respect of the international application, he or she would not be entitled to act on behalf of the applicant in respect of the application and would merely receive correspondence relating to the application (for further information on special addresses for correspondence, see the Practical Advice in PCT Newsletter No. 07/2002). In such a case, the applicant may wish to appoint a new agent who is entitled to act before the RO/IB, otherwise, any correspondence from the applicant would need to be signed by at least the deemed common representative (PCT Rule 90.2(b)) (except withdrawals which need to be signed by all applicants (PCT Rule 90bis.5)).
Where the IB is the receiving Office, the competent ISAs are the same as would have been competent if the application had been filed with a competent national/regional patent Office (PCT Rule 35.3). If the ISA which you originally chose in your application is not competent, you may need to choose a different ISA that is competent (that is, where there is more than one competent ISA – if only one ISA is competent, this would not be necessary). In the above-mentioned example, where a Brazilian applicant files erroneously with the USPTO, the applicant would, however, still be entitled to choose the USPTO as ISA because the National Institute of Industrial Property (Brazil) as receiving Office has specified the USPTO as a competent ISA.
Note that, although an international application may be filed with the RO/IB in any language (apart from the request, which must be filed in one of the ten publication languages under the PCT (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian or Spanish), if the language of the description and claims is not accepted by the ISA that is to carry out the international search, the applicant is required to furnish to the RO/IB, within one month from the date of receipt of the international application by that Office, a translation which is both a language accepted by the ISA and a language of publication (PCT Rule 12.3).It is recalled that, by using e-filing software such as PCT-SAFE, accidental filing with a non‑competent receiving Office can be avoided because applicants will receive relevant warning messages before they submit their application.
For more information on filing with the RO/IB, please see: http://www.wipo.int/pct/en/filing/filing.html