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.

Filing a demand for international preliminary examination when the international search report is late

Q: I have filed an international application claiming the priority of an application filed in August 2000 and designating all PCT Contracting States. The 19-month time limit for filing the demand in order to benefit from the later time limit for entry into the national phase in all designated States of 30 months from the priority date will expire in one week’s time, and I have not yet received the international search report (ISR) relating to my application. Consequently, I have nothing on which to base my decision as to whether it is worthwhile filing a demand for international preliminary examination and incurring the fees required therefor. Do I still have to file my demand before that 19-month time limit and pay the fees within one month of filing the demand, even if the ISR has not yet been issued? If the ISR turns out to be negative, can I stop the international preliminary examination pro-cedure and obtain a refund of any fees paid?

A: If you wish to benefit from the 30-month time limit for entry into the national phase under PCT Article 39(1), you must file your demand within 19 months from the priority date, regardless of whether certain circumstances exist, such as if the ISR has not yet been issued.*

The two fees payable when filing a demand, that is the handling fee and the preliminary examination fee, are, in general, both due within one month of the date of filing the demand (see PCT Rules 57.3 and 58.1(b)). PCT Rule 58bis provides for an extension of the time limit for the payment of those fees, whereby, if the fees have not been paid within that one-month time limit from the filing of the demand, the International Preliminary Examining Authority (IPEA) issues an invitation to pay the missing amount within one month of that invitation; however, this may be subject to a late payment fee (see PCT Rule 58bis.2).

If you receive a negative ISR before paying those fees, and you decide that you do not wish to proceed any further with the international application, you can withdraw the demand (see PCT Rule 90bis.4), withdraw the international application, if that is preferred (see PCT Rule 90bis.1), or you may simply choose not to pay the fees. In the latter case, shortly after one month from the date of issuance of the invitation to pay the unpaid fees, the demand will be considered by the IPEA not to have been submitted, with the result that the international preliminary examination will not be carried out on the international application and the effect of postponing the commencement of the national phase will be lost.

If, by the time the fees are due, you have still not received the ISR, you can either wait for the invitation to pay the fees—with the possibility of paying an additional fee—in which case the ISR might be issued before you actually pay the fees (and so you would be able to proceed as above in the case of a negative ISR), or you can go ahead and pay the fees in time. In the latter case, if the ISR, when it is eventually received, is negative, and you decide that you do not wish to proceed any further with the international application, you can withdraw the demand and request a refund of the fees from the IPEA concerned.

In the case of the handling fee, the IPEA will fully refund that fee to the applicant if the demand is withdrawn before it is sent by that Authority to the International Bureau (see PCT Rule 57.6(i)). The extent, if any, to which, and the conditions, if any, under which the IPEAs will refund any of the international preliminary examination fee varies depending on the IPEA concerned. In the case of many of the IPEAs, if the international application or the demand is withdrawn before the start of the international preliminary examination, there is a refund of 100%, in the case of two of the IPEAs the refund under those conditions is less than that, but in the case of one of the IPEAs, no refund will be given. For details, refer to the PCT Applicant’s Guide, Vol. I/B, Annex E. It is worth noting that, if the IPEA is the same Office as the ISA, it is unlikely that international preliminary examination will start before the ISR has been issued, and, as a consequence, the likelihood of a refund is higher.

* This would also be the case after 1 April 2002, when the new time limit under PCT Article 22(1) enters into force, since you wish to delay the entry into the national phase before all designated Offices, and the new time limit does not apply to certain Offices (for details, see PCT Newsletter No. 02/2002.