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.
Possible remedies where time limits under the PCT have been missed due to unforeseen events
Q: I am a patent attorney working for a law firm, and have a number of pending PCT applications, as well as applications that I am planning to file in the near future. I am concerned about the effects of the current novel Coronavirus (Covid-19) pandemic, and what will happen regarding our pending PCT applications, as well as applications yet to be filed, if certain PCT deadlines are not met in the following situations:
– if the PCT Office with which an action needs to be taken is exceptionally closed; or
– if our firm is forced to close temporarily.
Please could you explain what remedies might apply in case of any delay that occurs as a result of these circumstances?
A: This Practical Advice will take a look at the above‑mentioned scenarios separately, and suggest possible remedies that may be applicable in the circumstances.
The Receiving Office or other PCT Authority or the International Bureau, with which a particular action needs to be taken, is closed
PCT Rule 80.5(i): If a national office or intergovernmental organization acting as a receiving Office (RO), International Searching Authority (ISA), Authority specified for supplementary search (SISA), International Preliminary Examining Authority (IPEA), the International Bureau (IB) or a designated/elected Office were to exceptionally not be open to the public for the purposes of the transaction of official business on a particular day, all PCT time limits (including the time limits under PCT Articles 22 and 39 to enter the national phase) expiring on that day would be extended, under PCT Rule 80.5(i), to the next subsequent day on which that Office or authority is open for business.
Note that PCT Rule 80.5(i) applies to any time limit in the PCT and an equivalent provision in the Paris Convention applies to the priority period (refer to Article 4(C)3, below).
PCT Article 8; Article 4(C)(3) of the Paris Convention: As far as the failure to file any new international application within 12 months from the filing date of an earlier application (the priority of which you wish to claim in the international application) is concerned, this is governed by Article 4(C)(3) of the Paris Convention. Unfortunately, if the international application is received after the expiration of the 12‑month time limit, you would only have protection in the case where the receiving Office is not open for the filing of applications, and not where the applicant or agent’s Office is closed for business.
Temporary closure of the agent or applicant’s place of work
PCT Rules 26bis.3 and 49ter.2: One possible remedy in case of failure to file the international application within the 12‑month priority period, however, would be to attempt to make use of the provisions concerning “restoration of the right of priority”, which give applicants who have missed the 12‑month Paris Convention priority period the possibility of restoring their priority claim (refer to PCT Rules 26bis.3 and 49ter.2). The decision on a request for restoration would be taken on a case-by-case basis by either the receiving Office or the designated Office in the national phase, and a detailed explanation would need to be provided, in particular, if the applicant wishes to show that the “due care” standard has been met. Please note, however, that some Offices have submitted a notification of incompatibility in respect of these Rules (please refer to: www.wipo.int/pct/en/texts/reservations/res_incomp.html)
PCT Rule 82quater: For missed time limits applicable for performing an action before the RO, ISA, SISA, IPEA or the IB, PCT Rule 82quater may apply in circumstances such as the one you describe. This Rule provides for excuse of delays in meeting time limits due to force majeure reasons set out in the Rule. To benefit from this Rule, the applicant would need to present evidence to that effect to the Office concerned, not later than six months after the expiration of the applicable time limit, in addition to having taken the relevant action as soon as reasonably possible. It would be up to the Office, Authority or the IB, as the case may be, to decide whether the failure to meet the time limit could be excused according to the Rule. Please note, however, that this Rule does not apply to the priority period and the time limit for entering the national phase.
PCT Rule 49.6: If a PCT applicant were to fail, within the applicable time limit, to enter the national phase due to the reason mentioned above, he/she may request the reinstatement of rights before the relevant designated Offices under PCT Rule 49.6. This would again be a case‑by‑case decision to be taken by the designated Offices and may depend on whether the Office in question applies the due care or the unintentional standard. Please note, however, that some Offices have submitted a notification of incompatibility in respect of this Rule (please refer to: www.wipo.int/pct/en/texts/reservations/res_incomp.html).
If the time limit missed relates to an action to be performed in the national phase before a designated or elected Office, possible remedies may also be available under the relevant national laws (refer to PCT Rule 82bis.2 and, as an example of such a national/regional law, the request for “further processing” at the European Patent Office (Rule 135 EPC)). In this regard, please consult the respective National Chapters of the PCT Applicant’s Guide and the national Offices for further information.
Note also that if any submission of document or payment of fee is delayed due to irregularities in the mail service, please consult PCT Rules 80.5(ii), 80.6 and 82.1.