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.

Information available to third parties about a withdrawn priority claim

Q: After filing an international application claiming the priority of an earlier filed national application, I realized that the earlier application contained information that was not contained in the international application, and which should never have been disclosed in the earlier application in the first place. I would like to know what my options are, if any, for the information contained in the earlier application not to be made available to the public. Will it be sufficient for me to withdraw the priority claim so that neither the priority document nor information about the priority claim will be available to third parties?

A: If you withdraw a priority claim under the PCT, the extent to which the priority document itself and information about that priority claim are available to third parties in respect of the PCT application depends on the time at which you withdraw the priority claim, as explained below under item (1), noting that the options available to you under the PCT system cannot be considered in isolation from the status of your earlier national application or any other application you may have filed outside the PCT system (see item (2), below).

(1)(a) Withdrawal of a priority claim before completion of technical preparations for publication

If your notice of withdrawal of the priority claim is received by the International Bureau (IB) before the completion of technical preparations for international publication, that is, before 15 days prior to the date of publication (if the notice of withdrawal is sent to the receiving Office, it will have to be sent even earlier, as the receiving Office must then be able to notify the IB of the withdrawal before completion of technical preparations for publication):

  • the priority document will not be available to third parties (in accordance with PCT Rule 17.2(c)(ii)), either via the IB's PatentScope search service (www.wipo.int/pctdb/en/) or upon specific request addressed to the IB; and
  • information concerning that priority claim will not be included in the bibliographic data on the front page of the published international application.

Having said that, it is very important to note that third parties may obtain information about the priority claim concerned if they request the IB to furnish copies of certain documents contained in its file, in particular the request form (priority claim(s) will appear in Box No. VI) or subsequent correspondence relating to priority claims (such as a declaration correcting or adding a priority claim or a notice of withdrawal of a priority claim). It is recalled that access to such documents by third parties is governed by PCT Rule 94.1(b), which provides that a third party can, after international publication of the international application, request the IB to furnish copies of any document contained in its file (subject to PCT Article 38 and PCT Rule 44ter.1 and subject to the reimbursement of the cost of the service).

(b) Withdrawal of a priority claim after completion of technical preparations for publication but before international publication of the international application

If your notice of withdrawal of the priority claim is received by the IB during the 15 days between the date of completion of technical preparations for international publication and the actual publication date:

  • the priority document will not be available to third parties (in accordance with PCT Rule 17.2(c)(ii)), either via the PatentScope search service or upon specific request addressed to the IB;

but:

  • it will be too late for the IB to omit the information concerning the priority claim from the front page of the published international application;
  • the IB will publish a separate notice on the PatentScope search service (under the "notices" tab of the international application concerned) announcing the withdrawal of the priority claim after completion of technical preparations for publication (PCT Rule 48.6(c)); and
  • the PatentScope search service will include an indication on the bibliographical data screen (under the tab "biblio. data") that the priority claim has been withdrawn.

Third parties will therefore be aware that the priority claim had been made and subsequently withdrawn, but will not have access to the priority document itself.

(c) Withdrawal of a priority claim after international publication of the international application

If your notice of withdrawal of the priority claim is received by the IB after the international application has been published:

  • the priority document will be available to third parties both via the PatentScope search service and upon specific request addressed to the IB (PCT Rule 17.2(c));
  • information concerning the priority claim will have already been included on the front page of the published international application; and
  • the IB will publish a separate notice on the PatentScope search service (under the "notices" tab of the international application concerned) announcing the withdrawal of the priority claim after international publication (PCT Rule 48.6(c)); and
  • the PatentScope search service will include an indication on the bibliographical data screen (under the tab "biblio. data") that the priority claim has been withdrawn.

(2) Withdrawal of the national application, or any other subsequent applications claiming priority of that application

On the assumption that you are able to withdraw the priority claim before completion of the technical preparations for international publication (see item (1)(a)), you must also withdraw the earlier national application itself so that it is not published under the applicable national law. Similarly, if other applications have been filed outside the PCT system, you must ensure that they are also withdrawn. In other words, attending only to the withdrawal of the priority claim in the PCT application to prevent access to the priority document, or publication of information about the priority claim, does not have any effect on the access to that document and related information as far as the priority application and other related applications are concerned.

On the assumption that you are not able to withdraw the priority claim before completion of technical preparations for international publication (see items (1)(b) and (c) above), information about the priority claim (and possibly also the priority document itself) will be accessible to third parties under the PCT system, but you may be able to limit the extent to which information may become available in respect of the priority application itself or other applications filed outside the PCT system. It may be that under the circumstances, limiting access is the best you can achieve, rather than preventing access altogether. You must then take action under each applicable national law as a matter of urgency.

(3) Information on withdrawing priority claims under the PCT

It is recalled that you can withdraw a priority claim at any time prior to the expiration of 30 months from the priority date (PCT Rule 90bis.3(a)) and that, where the withdrawal of a priority claim causes a change in the priority date, any time limit which had been computed from the original (earliest) priority date and which has not already expired will be recomputed from the priority date resulting from that change (that is, recomputed from the international filing date or, if there is another priority claim, the new priority date resulting from the withdrawal of the earliest priority claim) (PCT Rule 90bis.3(d)). It is recommended that you always submit withdrawals of priority claims, as well as any other types of withdrawal under PCT Rule 90bis, to the IB, and that you use Form PCT/IB/372 (Notice of Withdrawal), ensuring that you mark the box which enables you to make the withdrawal conditional on its being received by the IB in time to prevent international publication.

Please be aware that before withdrawing any priority claim, you must consider the consequences that such withdrawal will have on the assessment of novelty and inventive step in the light of the relevant prior art, which would then include prior art published before the international filing date or any other priority date.

For information on the withdrawal of priority claims see PCT Applicant's Guide, paragraphs 460-461, and for information on the withdrawal of priority claims in order to postpone entry into the national phase, see PCT Newsletter No. 01/2003, page 11.