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PCT Newsletter 05/2015: 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.

Late payment fees when the PCT fees are paid more than one month after the date of receipt of the international application by the receiving Office

Q: I am the agent for an international application in respect of which, due to an administrative error, the transmittal fee, international filing fee and search fee were not paid within the one-month time limit for paying those fees, although they were paid two days after the expiration of that time limit. Will my payment be considered to have been made on time, and if not, will I have to pay a late payment fee to the receiving Office?

A: It is recalled that the time limit for the payment of the transmittal fee, international filing fee and search fee under PCT Rules 14.1(c), 15.3 and 16.1(f), respectively, is one month from the date of receipt of the international application. Where no or insufficient fees have been paid at the time of filing the application, the receiving Office may invite the applicant (for the first time) (using Form PCT/RO/102), without requesting any late payment fee, to pay the balance due within one month from the date of receipt of the international application (see the Receiving Office Guidelines (ROGL), paragraph 258, and the Administrative Instructions under the PCT, Section 304). This is not an obligation for the receiving Office, and so in your case, perhaps you did not receive this reminder.

Where, by the time the fees are due, the receiving Office finds that no fees were paid to it, or that the amount paid to it is insufficient to cover the fee or fees concerned, the receiving Office will, in accordance with PCT Rule 16bis.1, invite the applicant (using Form PCT/RO/133) to pay to it, within a month from the date of that invitation, the amount required to cover that or those fees, together with, where applicable, a late payment fee under PCT Rule 16bis.2 (see ROGL, paragraph 259). The late payment fee is 50% of the amount of the unpaid fees, or, if this amount is less than the transmittal fee, an amount equal to the transmittal fee. The amount will not exceed the amount of 50% of the international filing fee (not taking into account any supplemental fee where the international application contains more than 30 sheets) (see ROGL, paragraph 264). Note that if the applicant is entitled to a reduction in the international filing fee under items 4 and/or 5 of the Schedule of Fees, any late payment fee must be calculated on the basis of the international filing fee as reduced.

Given that you missed the one-month time limit for paying the fees, whether or not you will have to pay a late payment fee will depend on two things:

– If your payment is received by the receiving Office before it sends the invitation under PCT Rule 16bis.1, it will, in accordance with PCT Rule 16bis.1(d), be considered to have been received before the expiration of the time limit under PCT Rule 14.1(c), 15.3 or 16.1(f), as the case may be. In other words, if your payment reaches the receiving Office after one month from the receipt by it of the international application, but before it issues the invitation to pay the (extra) fees (Form PCT/RO/133), and provided that your payment covers the total amount due, no invitation to pay the missing amounts should be sent and no late payment fee should be required (see ROGL, paragraph 263). All receiving Offices are bound by this provision under PCT Rule 16bis.1(d).

– Also, even if the payment is not received before the receiving Office sends the invitation under PCT Rule 16bis.1, the receiving Office is not obliged to charge a late payment fee – this depends on the practice of the Office concerned (see ROGL, paragraph 264).

It is a best practice to pay the fees that are due upon filing an international application as soon as possible so as to avoid late payment of fees. Although the receiving Office will send the applicant either one or two reminders to pay missing fees, late payment can result in the payment of extra fees, and can ultimately result in the international application being considered withdrawn (via Form PCT/RO/117) in accordance with PCT Article 14(3) if they are not paid by the expiration of the extended period allowed under PCT Rule 16bis.1. The reminder procedure which has been established under the PCT, and the requirement that the fees must be paid well before the publication of the international application, help to ensure that applications are not considered withdrawn for non payment of fees at a time when it is too late to prevent the international application from being published.

As far as payment of fees is concerned, please be aware that it is preferable not to make payments by check, as this payment mode takes longer, and also, certain checks may be refused by banks. In the case of applications filed with the International Bureau as receiving Office (RO/IB) using ePCT-Filing, fees can be paid immediately online, either with a credit card or by debiting a WIPO current account.