PCT Newsletter 03/2021: 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.

Practical Advice

The possible consequences of entering the national phase early before a particular designated Office, and subsequently withdrawing the priority claim in order to delay national phase entry in respect of other Offices

Q:  On 9 November 2020, I filed an international application on behalf of a corporate applicant, which claimed priority of a national application filed on 9 December 2019.  Unfortunately, due to financial difficulties, there is concern that the applicant may not be in a position to pay many of the national fees before the Offices where we plan to enter the national phase.  There is one particular designated State where the applicant considers it particularly important to enter the national phase as soon as possible, and to retain the right of priority to the earlier application.  However, for a number of other States where protection is sought, the applicant would like to postpone entry into the national/regional phase (and all the necessary fee payments) by withdrawing the priority claim.  Can the applicant do this, and if so, would the priority claim still be valid in the Office where the national phase had been entered early?  Are there any potential risks in taking such action?

A:  While the PCT does not provide for the possibility of withdrawing a priority claim only for selected designated States during the international phase, you could request early national phase processing or examination in a selected State (or selected States) as set out in PCT Article 23(2), and afterwards, withdraw the priority claim under PCT Rule 90bis.3(a), within the time limit of 30 months from the priority date.  This would normally have the effect that the withdrawal of the priority claim would not be effective in the State in which you have already entered the national phase.  The relevant legal provision is PCT Rule 90bis.6(a), which states:

“Withdrawal under Rule 90bis of the international application, any designation, any priority claim, … shall have no effect in any designated or elected Office where the processing or national examination of the international application has already started under Article 23(2) or Article 40(2).”

This means that if you have already entered the national phase before the designated (or elected) Office concerned, and the Office has started processing or examining the international application before you submit a notice of withdrawal of the priority claim, that designated Office will take the priority claim into account.  If you decide to proceed in this way, however, you are advised to specifically request the Office to start processing or national examination of the application as soon as possible, and subsequently check with it whether it has already started the processing or national examination of the application before proceeding with the withdrawal of the priority claim. 

Please be aware that, upon receipt of a notice of withdrawal of the priority claim from the applicant, the International Bureau (IB) issues a notice of withdrawal (Form PCT/IB/317), which is systematically sent as a batch to all designated Offices, including the Office where you will have requested early entry into the national phase − the IB does not know and will not check with each individual Office whether national phase processing or examination has already started.  Notwithstanding, any withdrawal effected after the national phase processing or examination has started at the designated Office concerned will not have effect in that State. 

By withdrawing the only priority claim in an international application, the international filing date (in your case, 9 November 2020) would become the new “priority date” and, in accordance with PCT Rule 90bis.3(d), any time limit calculated on the basis of the original priority date that has not already expired would be calculated from the new priority date.  This would have the desired effect that the time limit for national phase entry before the other offices would be recalculated from the new priority date, and you would gain a further 11 months.  As the time limit for entry into the national phase is at least 30 months from the priority date for the majority of States1, you would therefore have at least until 9 May 2023 by which to pay the national fees for entry into the national phase before the other Offices (instead of 9 June 2022).  Note also that, in your case, the withdrawal of the priority claim would also delay the publication of the international application if the notice of withdrawal reaches the IB before the completion of the technical preparations for international publication2

While withdrawing the priority claim would allow the applicant to delay payment to other Offices of the national fees and other fees payable upon entry into the national (or regional) phase, thus leaving the applicant’s options open as to whether to pursue the application elsewhere later on, this strategy does not come without potential dangers.  It is very important to be aware that before withdrawing any priority claim, you must consider the consequences that such withdrawal would have on the assessment of novelty and inventive step in light of the relevant prior art, and be particularly mindful of prior art which dates between the original priority date and the new priority date.  Withdrawing the priority claim would therefore increase the risk that intervening prior art, or a prior disclosure by the applicant, might jeopardize the chances of obtaining patent protection in those countries in which the international application proceeds without the priority claim.  You may also wish to consult local agents in the countries of interest on what constitutes prior art under the relevant national laws.

In conclusion, even though it would be procedurally relatively easy to withdraw a priority claim, and by doing so obtain more time before having to pay the national fees, it could have serious consequences and you should not take that decision lightly.

Note that some designated Offices do allow applicants to delay entry into the national phase under certain conditions, but this is usually upon payment of a fee.  For further information, please refer to the corresponding National Chapter (Summary) pages of the PCT Applicant’s Guide (https://www.wipo.int/pct/en/guide/index.html).

Please refer to the resources indicated below for further information on the following topics of relevance to this Practical Advice:

  • the withdrawal of priority claims: the PCT Applicant’s Guide, International Phase, paragraphs 11.056 at:

https://www.wipo.int/pct/guide/en/gdvol1/pdf/gdvol1.pdf

  • how to withdraw priority claims using the dedicated ePCT Action:

https://www.wipo.int/pct/en/epct/learnmore.html?N=870. 

  • early entry into the national phase: the “Practical Advice” in PCT Newsletter 10/2011, page 15, at:

https://www.wipo.int/edocs/pctndocs/en/2011/pct_news_2011_10.pdf

  1. As the designated Offices of Luxembourg and the United Republic of Tanzania have notified the International Bureau of the non-applicability of the 30-month time limit under PCT Article 22(1), as modified with effect from 1 April 2002, the applicable time limits for entry into the national phase are, respectively, 20 and 21 months from the priority date.  However, a 31‑month time limit applies if a European patent or ARIPO patent, respectively, is being sought in those States.
  2. Technical preparations are generally completed 15 days before the publication date (which is scheduled to take place as soon as possible after the expiration of 18 months from the priority date).