PCT Newsletter 04/2021: Practical Advice

WARNING: Although the information which follows was correct at the time of publication, 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.

Late receipt of documents from a PCT Office:  calculation of a time limit where PCT Rule 80.6 applies

Q:  As I failed to include an e-mail address in the Request Form when I filed an international application, my receiving Office was obliged to send an invitation to pay the missing PCT fees (together with a late payment fee) (Form PCT/RO/133) by postal mail.  The date of issue of the invitation is Tuesday, 23 March 2021, but I only received it 15 days later, on Wednesday, 7 April 2021.  The fees are due to be paid one month after the date of issue of the Form, that is, by Friday, 23 April 2021, which gives me very little time.  Is it possible to request an extension of the time limit for the payment of the fees in compensation for the delay in the receipt of the form?

A:  If you can provide evidence to the satisfaction of the receiving Office that the invitation to pay the missing fees was received more than seven days after the date of issue indicated on the invitation, in accordance with PCT Rule 80.6 (second sentence), the Office will treat the time limit for the payment of the fees as expiring later than the usual one month from the date of issue of the invitation.  The number of additional days that you would be given to pay the fees would be equal to the number of days that you received the invitation later than seven days after the date of issue of the invitation.

Since you received the invitation 15 days after the date of issue, you would have eight additional days from Friday, 23 April 2021, which would fall on Saturday, 1 May 2021.  However, it is recalled that if the expiration of any period during which any document or fee must reach a national Office (or intergovernmental organization) falls on a day on which that Office is not open to the public for the purposes of the transaction of official business, the period shall expire on the next day on which the Office concerned is open for business (PCT Rule 80.5).  Presuming that your receiving Office was actually closed on Saturday, 1 May 2021 as well as on Sunday, 2 May 2021, the time limit would therefore expire on Monday, 3 May 2021.  The date calculation is more clearly shown below:

23.03.2021 + 1 month          = 23.04.2021

+ 8 days (PCT Rule 80.6)     = 01.05.2021 (Saturday)

→ apply PCT Rule 80.5       = 03.05.2021 (Monday)

It is important to be aware that, unlike PCT Rule 80.5, which is applied automatically, the application of PCT Rule 80.6, second sentence, is not automatic, but conditional on you being able to provide evidence to the satisfaction of the Office concerned, and you would have to provide that evidence very quickly to benefit from the extension of time limit.

The delay in the receipt of the invitation from the receiving Office, if due to problems encountered with the postal service, highlights the importance of providing, at the time of filing an international application, an e‑mail address to which notifications can be sent by the receiving Office, as well as by the International Bureau (IB), the International Searching and Preliminary Examining Authority and the designated (or elected) Offices. 

For any pending international applications, you can request the recording under PCT Rule 92bis of an e‑mail address for sending PCT notifications and, if you have several pending applications, you can include a list of all the other applications to which the e‑mail address should be added.  The IB will record the e‑mail address and notify the PCT Offices and Authorities concerned.  The best way to do this is by uploading your request for the recording of the e‑mail address using ePCT.  For this, if you have not already done so, you should create a WIPO account so that you can log into WIPO’s ePCT system, and upload documents to the IB in electronic form.  Please upload your request to one international application only and select the document type “Request for change under Rule 92bis (for multiple applications),” listing all the other international application numbers for which an e-mail address is to be added (and for which the 30‑month time limit has not yet expired).  At the time of processing by the IB, the request will be copied into the file of each international application on the list.  For further information, please refer to:

https://www.wipo.int/pct/en/epct/learnmore.html?N=690 and

https://www.wipo.int/pct/en/epct/learnmore.html?N=820

For further information on alternatives to paper transmittal and receipt of PCT‑related documents, please refer to the Practical Advice in PCT Newsletter No. 04/2020 at:

https://www.wipo.int/edocs/pctndocs/en/2020/pct_news_2020_4.pdf

and for information regarding electronic communications with the IB, please refer to:

https://www.wipo.int/pct/en/covid_19/communication.html

It is generally recommended that all applicants file their international applications electronically (in particular using ePCT) if their receiving Office accepts such filings1.  Using ePCT not only avoids problems due to delay or loss of PCT‑related documents in the post, but also enables the applicant to benefit from the many other safeguards and useful features of ePCT.  Note that all applicants can manage their international applications electronically after filing, regardless of the way in which the application has been filed, by gaining access rights to their applications in ePCT.  A wealth of information on getting started using ePCT is available on the PCT eServices Help page at:

https://www.wipo.int/pct/en/epct/learnmore.html?N=169

1. It is recalled that the receiving Office of the IB, which accepts international applications filed using ePCT‑Filing or EPO Online Filing, is competent to act as receiving Office for applicants who are nationals and/or residents of any PCT Contracting State.  It also currently accepts filings using the PCT‑SAFE software or offline filings on physical media (CD-R or DVD-R), but only until 30 June 2021.