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.

Consequences of an international application being considered withdrawn and potential remedial procedures in the national phase

Q: We failed to pay the fees for a new PCT application in time after receiving the 'Invitation to Pay Prescribed Fees Together with a Late Payment Fee' (Form PCT/RO/133). Now, the receiving Office has issued a decision to consider the application withdrawn (PCT/RO/117). Does the PCT provide for any possibility of revival of the application?

A: Other than the legal safeguard in PCT Rule 16bis.1(e) which allows for the late payment of fees after the expiration of the initial time limit but before the issuance of the declaration that the application is considered withdrawn, the PCT does not provide any general procedure for reviving an application in the international phase once it has been declared to be considered withdrawn by the receiving Office. When the receiving Office has made that declaration, the application loses its legal effect (see PCT Article 11(3)) in each designated State with the same consequences as the withdrawal of any national application in that State (PCT Article 24(1)).

To address this issue, you may first wish to investigate whether your having missed the time limit to pay the fees can be excused thus providing you with an opportunity to still pay the fees, in which case your application could potentially be reinstated. For more information about the excusable causes for the delay in meeting time limits, please refer to the Practical Advice of PCT Newsletter 03/2020: Possible remedies where time limits under the PCT have been missed due to unforeseen events.

You may also want to check if the Office acting as receiving Office has any national procedures to review a decision to consider the application withdrawn, taking into account the particular circumstances of your case.

If those investigations do not lead to a positive outcome for you, any attempt to reinstate rights can only be pursued directly with each designated Office where you still wish to enter the national phase and seek patent protection.

PCT Article 25 and Rule 51 provide that the applicant may ask the national Office concerned to review an unfavorable decision in certain situations, including where the receiving Office has considered an international application withdrawn. The time limit to make such a request is two months from the date of the notification of withdrawal (Form PCT/RO/117) and the applicant can request that the International Bureau send copies of relevant documents from the file of the application to the Offices specified by the applicant. Within the same time limit, the applicant must fulfil the requirements to enter the national phase in each of the Offices concerned, that is, pay the national fee and furnish any required translation.

Each Office will review the case, as far as it is concerned. If the Office finds that the declaration was the result of an error or omission on the part of the receiving Office, it will treat the international application as if it had not been considered withdrawn. Even if the Office finds the decision of the receiving Office to consider the application withdrawn justified under the PCT, the Office may, nevertheless, maintain the effect of the international application if the application of its national law would result in a more favorable outcome (see PCT Articles 24(2) and 27(4)).

For cases of delays in meeting PCT time limits, there are further provisions under which excuse of those delays can be sought. Article 48(2) and Rule 82bis provide that any Contracting State must, as far as that State is concerned, excuse any delay in meeting a time limit for reasons acceptable under its national law. You should therefore check whether the Office where the applicant wishes to continue seeking patent protection applies any national or regional provisions to excuse delays. If there are, the Office must apply the provisions in question to PCT applications in the same manner and under the same conditions as it would apply them to patent applications filed directly before that Office. Examples of such provisions are those that allow for the reinstatement of rights, restoration, restitutio in integrum, revival of abandoned applications, continuation of proceedings or "further processing" (for example Article 121 of the European Patent Convention). Any such remedies must also be available to PCT applicants and Article 48(2)(b) further clarifies that the PCT would not prevent any Contracting State from excusing, for reasons other than those admitted under its national law, any delay in meeting any time limit.

For specific procedures applied by each designated Office, information on remedial procedures can be found in the National Chapters of the PCT Applicant's Guide, available at:

/pct/en/guide/

and for further details, the national Office concerned should be contacted directly.

For national or regional case law on PCT Article 25 or Article 48, please refer to the WIPO PCT Case Law Database (https://www.wipo.int/pctcaselawdb/en/list.jsp). Please also do not hesitate to inform the International Bureau (pct.legal@wipo.int) about any legal and administrative decisions from courts and administrative bodies in and operating for PCT Contracting States which interpret or demonstrate the application of PCT provisions and which might be helpfully included in our database.