PCT Newsletter 01/2008: Practical Advice

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.

Consequence of excluding a designation of a State under PCT Rule 4.9(b) where there is no claim of priority of an earlier national application filed in that State

Q: I filed a number of international applications claiming the priority of earlier applications filed in Germany. In those applications, the relevant check-box in Box No. V of the request form was marked, in accordance with the provisions of PCT Rule 4.9(b), to exclude the designation of Germany. I subsequently filed another international application in which that box was marked, even though the international application did not claim the priority of an earlier application filed in Germany (it claimed the priority of an application filed in Austria). What will be the consequence of the box being checked? Is it still possible to designate Germany?

A: It is recalled that PCT Rule 4.9(b) was adopted to accommodate the situation where the national law of certain countries (at the time of writing this: Germany, Japan, the Republic of Korea and the Russian Federation) provides for automatic withdrawal of an earlier national application if a later-filed international application claims the priority of that earlier national application and designates that State; in such cases, the applicant can exclude the State concerned from the automatic and all-inclusive designation of all PCT Contracting States under PCT Rule 4.9(a), thereby maintaining the priority application.

Even though you have excluded the designation of Germany, under PCT Rule 4.9(b) you may only exclude the designation of such a State in Box No. V if the priority of an earlier national application filed in that State is claimed in Box No. VI. Therefore, if, on the date of filing, the request part of your international application contains an indication under Rule 4.9(b) that the designation of Germany is not made, but does not contain a priority claim to an earlier national application filed in that State, you should be notified by the receiving Office, and your attention drawn to Rule 26bis (“Correction or Addition of Priority Claim”) to give you the opportunity to add any missing priority claim, in case the lack of priority claim is due to an omission on your behalf. In accordance with Section 319 of the Administrative Instructions under the PCT, if, by the expiration of the time limit under Rule 26bis.1(a), the receiving Office has not received any notice correcting or adding a priority claim to an earlier national application filed in Germany, it will cancel ex officio the indication in Box No. V, and the designation of Germany would thereby be reinstated. The receiving Office would then notify you and the International Bureau, by way of PCT Form PCT/RO/146, that it had cancelled ex officio the indication in Box No. V. It would therefore not be necessary for you to take any action in this situation.

Notwithstanding, there would be nothing to prevent you from notifying the receiving Office as soon as you realize that the designation of Germany has been erroneously excluded, and confirming to them that the international application does not claim the priority of an earlier national application filed in Germany. This would streamline the correction procedure (the receiving Office would not have to issue the first notice referred to in the preceding paragraph) and ensure that the receiving Office applied Section 319(b) of the Administrative Instructions directly.

Note that the above would equally apply should a similar situation arise where the designations of Japan, the Republic of Korea or the Russian Federation have been erroneously excluded.

For further information on the implications of PCT Rule 4.9(b), see the Practical Advice published in PCT Newsletter Nos. 11/2003 and 04/2006.