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.

Withdrawal of designations of States which have special provisions concerning earlier national applications from which priority is claimed

Q: I have filed an international application claiming the priority of an earlier application filed in Germany. Unfortunately, I forgot to tick the relevant box in Box No. V of the Request Form in order that Germany would be excluded from the automatic and all-inclusive designations. Bearing in mind that my earlier application could be withdrawn if the designation of Germany exists in a later filed corresponding international application, is it possible to safeguard the earlier application by withdrawing the designation, and if so, by when must this be done?

A: The national law of Germany, as well as those of Japan, the Republic of Korea and the Russian Federation, provides for automatic withdrawal, at a certain moment, of an earlier national application if a later filed international application claims the priority of that earlier national application and designates that State. This means that if the designation concerned is not withdrawn from the international application, the earlier national application will be considered withdrawn at a time defined in the national law. In connection with this, the above-mentioned four States have notified WIPO that PCT Rule 4.9(b), as amended with effect from 1 April 2006, applies in respect of the designation of each of those States.

The fact that the designation of any of those States is not excluded from the international application on filing is not generally a problem, except in one particular case concerning the Republic of Korea, as explained below. The reason for including the special boxes in Box V of the Request Form is to simplify matters for applicants, who can still, in most cases, withdraw the designations after filing with the same effect as excluding the designations on filing. It is, however, recommended that such withdrawal be effected as soon as possible to avoid the withdrawal of the earlier application. The special provisions concerning earlier national applications from which priority is claimed, including the time limit within which the earlier applications are considered withdrawn, are different for each State, as discussed below.

In the case of the designation of Germany, as well as the designation of the Russian Federation, the applicant has more time in which to withdraw the designation in order to safeguard the earlier filed national application, as the designation can be withdrawnat any time prior to the entry into the national phase. Note, however, that, in the case of Germany, the earlier national application will only be deemed withdrawn if:

  • both the applications relate to the same kind of protection;
  • the international application has been filed in German with the German Patent and Trade Mark Office as receiving Office; and
  • DE has been designated in the international application.

It is however, recommended to withdraw the designation of DE and RU as early as possible before national phase entry, in particular in the case of Germany where national phase entry is automatic where the above-mentioned conditions are met.

In the case of Japan, the earlier filed national application will be lost if, by the expiration of 15 months from the filing date of the earlier application, the designation of Japan is still valid. Thus, the designation of Japan must be withdrawn before the expiration of 15 months from the filing date of the earlier application.

As far as the Republic of Korea is concerned, if the earlier application, the priority of which is claimed in the international application, is an application for a patent, that earlier application will be lost if the designation is not withdrawn before the expiration of 15 months from the priority date. It is very important to note, however, that if the earlier application is an application for a utility model, that earlier application will be considered withdrawn if the international application contains the designation of the Republic of Korea on filing. The designation must, therefore, be excluded upon filing the international application in order to safeguard the earlier filed utility model application.

For further information about these special provisions, see the PCT Applicant’s Guide, Annex B1 (DE, JP, KR and RU) at:

Further information about the designation system in general is included in the following “practical advice” articles:

  • The non-designation of certain States in the new Request form, applicable as from 1 January 2004 – PCT Newsletter No. 11/2003;
  • Signature requirements for the withdrawal of the US designation – PCT Newsletter No. 01/2004;
  • The procedure for withdrawing designations – PCT Newsletter No. 02/2004;
  • Automatic designation of the US: the consequences of the applicant/inventor being a resident and national of a non-PCT Contracting State – PCT Newsletter No. 03/2004;
  • Automatic designation of the US: indication of the inventors as “inventors only” where there is no intention to enter the US national phase – PCT Newsletter No. 04/2004;
  • Automatic designation of all PCT Contracting States: alternative to withdrawing a designation – PCT Newsletter No. 05/2004.
  • Maintaining the US designation where a US national application has already been filed – PCT Newsletter No. 02/2006.