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PCT Newsletter 07/2008: 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.

Withdrawal of an international application after international publication but before the issuance of the ISR.

Q: I recently tried to withdraw an international application before it was published, but, unfortunately, my notice of withdrawal was received by the International Bureau (IB) too late to prevent its publication. Since the International Searching Authority (ISA) had not yet issued the international search report (ISR) when the international application was published, it was published without the ISR. Given that international applications published prior to the issuance of the ISR are normally republished later with the ISR, would it be possible, in my case, to prevent publication of the ISR in view of the fact that the international application has been withdrawn?

A: Once your international application has been published, you cannot prevent the later publication of the ISR – the ISR must, according to PCT Rule 48.2(a)(v), form part of the published international application, regardless of whether there has been an intervening notice of withdrawal of the application. Your international application will have been published with an annotation to the effect that the ISR (or declaration by the ISA to the effect that no ISR will be established) was not available at the time of completion of technical preparations for publication, and the ISR (or declaration) will be published separately after it has been received by the IB (PCT Rule 48.2(g)).

The only way in which you could have been certain of stopping the publication of the ISR, as well as the publication of the rest of the international application, would have been to ensure that your notice of withdrawal reached the IB before the completion of technical preparations for international publication (PCT Rule 90bis.1(c)). It is recalled that this is normally 15 calendar days before the actual publication date. (For a good indication of the earliest potential date for international publication for a given application – which, in accordance with PCT Article 21.1(a), is normally promptly after the expiration of 18 months from the priority date – refer to the PCT Time Limit Calculator at: www.wipo.int/pct/en/calculator/pct-calculator.html). It is always recommended that applicants notify the IB of any withdrawal as early as possible before completion of technical preparations for publication, preferably by using Form PCT/IB/372 “Notice of withdrawal” and sending it by fax, making sure that the notice of withdrawal is signed by all applicants, or if signed by the agent, that the agent has been duly appointed by all applicants.

Notwithstanding, when the ISA is informed by the IB that the international application has been withdrawn (Form PCT/IB/307), the ISA is entitled to immediately discontinue the processing of the application and is no longer obliged to establish an ISR. In such a situation, if the ISA does not establish an ISR, the IB would not request the ISA to do so, and no republication of the international application would take place. There is no guarantee that this would be the outcome in any given case, however. (For information on refunds, where applicable, of the search fee where the international application has been withdrawn before the start of the international search, see the relevant part of Annex D of the PCT Applicant’s Guide.)

Note that a withdrawal of an international application can be made on the condition that it is to be effective only if the notice of withdrawal is received by the IB before completion of the technical preparations for international publication, and therefore in time to stop international publication of the application (see PCT Applicant’s Guide, International Phase, paragraph 453) – Form PCT/IB/372 contains a special check box for this purpose.

For further information on the publication and withdrawal of international applications, see the PCT Applicant’s Guide, International Phase, paragraphs 304 to 318B and 452 to 463, respectively.