PCT Newsletter 05/2020: 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.

Excuse of delay in meeting time limits – an example of a missed time limit for filing amendments to the claims under PCT Article 19

Q: Due to the COVID‑19 pandemic, our client was in quarantine and not equipped to provide instructions in time regarding the filing of amendments under PCT Article 19 with the International Bureau.  As a result, we have not been able to draft and file those amendments within the time limit under PCT Rule 46.1.  Is it possible to request an excuse of the delay of filing those amendments, and if so, what is the procedure for making that request?

PCT Rule 82quater.1 provides for excuse of delay in meeting a PCT time limit for actions such as the submission of documents and payment of fees – including the filing of amendments to the claims under PCT Article 19.  The provision under PCT Rule 82quater.1 refers to reasons of force majeure (“war, revolution, civil disorder, strike, natural calamity… or other like reason”). 

The International Bureau (IB) has clarified that its position is that the current global pandemic should be considered to be a “natural calamity ... or other like reason” – please refer to the IB’s interpretative statement at:

www.wipo.int/pct/en/news/2020/news_0009.html 

In order to have your amendments under PCT Article 19 accepted by the IB, you should:

  • submit the amendments under PCT Article 19 to the IB in electronic form1 as soon as is reasonably possible; and
  • make a request under PCT Rule 82quater for an excuse of the delay in meeting the applicable time limit by submitting, in electronic form1, a statement to the IB not later than six months after the expiration of the time limit under PCT Rule 46.12, citing “COVID‑19 related issues” as the reason for the delay.

Normally, under PCT Rule 82quater you would be required to present evidence to the Office, Authority or the IB, as the case may be, that the time limit concerned was not met due to the reason given.  However, the IB will treat favorably any PCT Rule 82quater request made which cites COVID‑19 related issues, and will not require you to provide evidence that the virus affected the locality in which you (or the applicant), reside, have a place of business, or are staying (please refer to the IB’s interpretative statement mentioned above).

Please note however, that the PCT System has many interdependent processes and an excused delay in one action may have repercussions elsewhere, which you would need to take into account where an action is delayed.  For example, if PCT Article 19 amendments are filed late, the application may need to be republished, with a corresponding delay in provisional protection.  Furthermore, if you wish to consider requesting international preliminary examination and would like the International Preliminary Examining Authority (IPEA) to take into account the PCT Article 19 amendments for the purposes of international preliminary examination, the amendments may not be available by the time you have to file the demand for international preliminary examination (that is, before the expiration of the time limit under PCT Rule 54bis).  You may of course, after filing the demand, request the IPEA to wait until the amendments have been prepared and filed and/or, if necessary, request the IPEA to excuse any delay in meeting the time limit to file the demand.  However, that may delay issuance of the international preliminary examination report, which you would normally wish to receive before deciding on any national phase entry.

Therefore, despite the generally favorable treatment of any requests under PCT Rule 82quater to excuse delays in meeting time limits, it is in the applicant’s interest to avoid delaying any actions to the extent possible, even where the circumstances make it difficult.   

Please note that PCT Rule 82quater is applicable for performing actions before the receiving Office, International Searching Authority, Authority specified for supplementary search, IPEA or the IB, however it is not applicable in the following circumstances:

  • in the case of the priority period which, according to PCT Article 8, is governed by Article 4 of the Paris Convention (the PCT Regulations, however, provide for the possibility of requesting restoration of the right of priority, either during the international phase or in the national phase, provided that the Offices concerned have not made any reservations in this respect); and
  • if a time limit missed relates to an action to be performed in the national phase before a designated or elected Office. Possible remedies before those Offices may be available under the relevant national laws (PCT Article 48(2), PCT Rule 82bis.2), and designated and elected Offices are required under PCT Rule 49.6 to provide for the possibility to reinstate rights with respect to an application, unless a designated State has made a reservation according to PCT Rule 49.6(f)3.  For further information, please refer to the relevant National Chapters of the PCT Applicant’s Guide at:  www.wipo.int/pct/en/guide/index.html, or contact the national Offices concerned directly.

For further information on other possible remedies that might be available where time limits under the PCT have been missed due to unforeseen events, please refer to the “Practical Advice” in PCT Newsletter No. 03/2020.

1. It is recalled that the IB strongly discourages the transmittal of documents relating to an international application by postal mail during this period of pandemic.  In the case of PCT Article 19 amendments, you are advised to file them by using the dedicated Action in ePCT (www.wipo.int/pct/en/epct/learnmore.html?N=840).  However, use of the Action is not possible if the time limit has already expired, in which case you should use the document upload feature in ePCT, including for submitting other types of document for which there is no dedicated ePCT Action available (such as the request under PCT Rule 82quater) (www.wipo.int/pct/en/epct/learnmore.html?N=820).  If you have not yet created a WIPO account in order to log in to the ePCT system and are not in a position to do so immediately, you can submit documents in PDF format using the Contingency Upload Service at:  https://pct.wipo.int/ePCTExternal/pages/UploadDocument.xhtml

2. The time limit under PCT Rule 46.1 is two months from the date of transmittal by the International Searching Authority of the international search report to the IB and to the applicant, or 16 months from the priority date, whichever time limit expires later, provided that any amendment made under PCT Article 19 which is received by the IB after the expiration of the applicable time limit shall be considered to have been received by the IB on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed.

3. For information on which States have made a reservation under PCT Rule 49.6(f), please refer to: www.wipo.int/pct/en/texts/reservations/res_incomp.html