Practical Advice
Possible safeguards in case of electricity and internet outage
Q: I need to submit a new PCT application today and file several documents relating to pending PCT applications at both my local receiving Office and other Offices. There are, on occasion, electricity and Internet outages in the area where my firm, as well as the local receiving Office, are located. What can I do in such circumstances? I need a plan B in case I am not able to timely submit the documents in question.
A: Where possible, it is advisable first to check all available options on the website of the Offices with which you intend to file a PCT application or other documents. The PCT Applicant’s Guide and the Office profiles in ePCT also contain information relating to available filing options where the Office has notified the International Bureau of such. If no information can be obtained or if the options available are not feasible in practice, you could consider filing your PCT application with the International Bureau as a receiving Office , or with another receiving Office in a different time zone which is competent to receive your application. Furthermore, many documents relating to pending applications may be filed at the International Bureau as well as the receiving Office or the International Searching or Preliminary Examining Authority, as applicable.
If, despite all your best efforts to exhaust all reasonable alternative means to timely file the international application or any other documents relating to pending applications, you could not avoid missing a time limit and you wish to request that the delay in meeting the time limit be excused, you need to distinguish your situation as follows:
Filing of a new international application within the priority period under the Paris Convention for the Protection of Industrial Property
If the receiving Office has declared that it was closed on a certain date (please refer to https://pct.wipo.int/ePCTExternal/pages/ClosedDates.xhtml) you may benefit from the “next business day rule” (Paris Convention Article 4(C)(3), PCT Rules 2.4(b) and 80.5)). In this case, a time limit that expired on the day that the Office was not open to the public for the transaction of business will expire on the following working day when the Office or organization is open for business again. If you file the new international application on the following day, the priority period will have been deemed to have been met.
If the failure to comply with the priority period occurred in spite all reasonable efforts having been taken to avoid the missing of the time limit, you may request restoration of the right of priority, invoking “force majeure” reasons in the case of electricity or Internet outages. The receiving Office will make its finding based on the particular circumstances of each case. However, some Offices have outstanding notifications of incompatibility with their national laws and would therefore not apply the restoration of priority procedure – these Offices are listed in the notifications of incompatibility filed under PCT Rule 26bis.3(j). For further details, please consult the Practical Advice sections of PCT Newsletter Nos. 01/2025 and 02/2020.
Submission of documents relating to pending international applications within a time limit fixed in the PCT Regulations
If you need to perform an action relating to a pending application within a time limit which cannot be extended (for example correcting a priority claim or filing a demand) and the permitted electronic means of communication at the relevant Office is not available since the outages have also affected the Office concerned, you may consider the possibility of taking advantage of PCT Rule 82quater.2(a) and request that the missing of the time limit be excused. A few Offices have notified the International Bureau that they apply this Rule, and in the specific event of occurrence of any unavailability of their electronic means of communication, they will also notify the International Bureau accordingly. Such notifications, including any applicable conditions at the Office, can be found on the WIPO PCT web page. If this is applicable in your case, you can then request excuse of delay in meeting the time limit under the conditions set by the relevant Office, without the need to provide evidence.
If the technical issues are on the applicant’s side, PCT Rule 82quater.1 provides that you can offer evidence that a time limit fixed in the Regulations for performing an action before the receiving Office, an International Authority or the International Bureau was not met due to specified reasons of force majeure, including a general unavailability of electronic communications services in the locality where you reside, have your place of business or are staying. You would need to establish that the outage affected a widespread geographical area, that it was unexpected or unforeseen, and that there was no alternative communication means available (refer to the PCT Applicant’s Guide – International Phase, paragraph 11.065A).
Any such evidence must be submitted to the competent Office or Authority or the International Bureau within six months after the expiration of the applicable time limit to the satisfaction of the Office in question. The Office may also waive the need for evidence under the conditions it sets and publishes (PCT Rule 82quater.1(d)), and which the International Bureau also publishes. In such case, you would simply need to submit a statement referring to the reason for which the requirement for evidence is waived.
It should be noted that PCT Rule 82quater refers to time limits fixed in the PCT Regulations and applies neither to the priority period which is governed by the Paris Convention nor to the time limit for entering the national phase, which is fixed in the PCT Treaty (Articles 22 and 39).
For more information on the excuse of time limits other than the priority period in situations of “force majeure”, please consult the Practical Advice section of PCT Newsletter Nos. 03/2020 and 05/2020.
The time limit for entering the national phase (Articles 22 and 39)
Remedies before designated and elected Offices may be available under the relevant national laws (PCT Article 48(2), PCT Rule 82bis.2), and designated and elected Offices are required under PCT Rule 49.6 to provide the possibility to reinstate rights with respect to an application, unless they have notified an incompatibility between their national law and PCT Rule 49.6(f) (please refer to: www.wipo.int/pct/en/texts/reservations/res_incomp.html). Further information is available in the relevant National Chapters of the PCT Applicant’s Guide at:
www.wipo.int/pct/en/guide/index.html
and, in all circumstances, you are advised to contact the national Offices concerned.
While safeguards exist which have the intention of helping PCT applications to excuse delays in certain specific circumstances, it is of course preferable to avoid such situations and instead try to file applications or documents as soon as possible noting that any safeguards require additional correspondence and are not always accepted or available in all contracting States.