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.
Withdrawing the international application in order to prevent international publication
Q: I am the agent for an international application which must be withdrawn to avoid publication. Based on the calculation, for the international publication date, of 18 months from the priority date, technical preparations for publication are probably due to be completed in about one week’s time. What is the best practical course of action for withdrawing the international application in order to ensure that the application does not get published?
A: If you wish to withdraw the international application under PCT Rule 90bis.1 early enough to prevent publication, it is strongly recommended that you submit the notice of withdrawal directly to the International Bureau (IB) before it completes the technical preparations for publication (see PCT Rule 90bis.1(c)). Those technical preparations are generally completed 15 days before the publication date (which is scheduled to take place as soon as possible after the expiration of 18 months from the priority date).
In order to maximize the chances that the withdrawal will be taken into account in time to prevent international publication, it is recommended that you use the ePCT system to submit the notice of withdrawal to the IB online. If you use ePCT to submit the notice of withdrawal, it will be instantly and automatically notified in the electronic file of the international application.
In order to use the ePCT system, if you have not already done so, you will need to create a WIPO user account, which is very quick and easy to set up (go to: https://pct.wipo.int/ePCT and follow the simple online instructions). Once you have a WIPO user account, you can log in to ePCT public services, search for the international application in question by entering the international application number and international filing date, and then use the “Upload documents” function to upload a PDF file containing a notice of withdrawal in the form of either a completed Form PCT/IB/372 (“Notice of Withdrawal”) (available in editable PDF format on the PCT website at: https://www.wipo.int/pct/en/forms/ib/editable/ed_ib372.pdf) or a letter.
When submitting your notice of withdrawal using the “Upload documents” function, you should be careful to select the correct document type (“Withdrawal of International Application”). After upload, the notice of withdrawal will be immediately available in the IB’s processing system, and publication will be suspended until the document has been processed by the IB (there is no risk of the international application getting published in the meantime, provided that the technical preparations have not yet been completed). In comparison, if you were to submit the notice of withdrawal to the IB by mail (be it regular mail, airmail or express mail) or by fax, it would still have to be handled manually upon arrival at the IB in order to enter the appropriate data in the IB’s electronic processing system, and this may take up valuable time.
Please note that although the “Upload documents” function described above is also available in ePCT private services, if you do not already have access to that and you are short of time, it is quicker to initially set up a basic user account that allows access to ePCT public services. Later on, you can upload a digital certificate to your account in order to obtain access to ePCT private services, which gives access to many more additional features and functions. For example, you can have pre-publication online access to all the documents and the most up-to-date bibliographic data concerning your international application, including the expected publication date.
If you already have access to ePCT private services, you can take a variety of online actions directly on the file of your international application using the functions available under the “Actions” tab (see the screenshot, below), including the withdrawal of the international application.
Using the online “Actions” in ePCT also eliminates the need to prepare separate correspondence and convert it into PDF for upload, since the system presents you with a simple web form to fill in online that is tailored to the action selected. For any online action, the system will automatically check that the action is being taken before the applicable deadline. For example, when selecting the action “Withdraw IA”, the system will immediately warn you if technical preparations have now closed and that proceeding with such a withdrawal at this stage can no longer prevent publication, in which case you may wish to reconsider whether or not the international application should be withdrawn.
Note that there is also a safeguard against withdrawing an international application where the publication of the international application cannot be prevented, which is available when submitting Form PCT/IB/372 (either via ePCT public services, by fax or by mail), in the form of a box which enables applicants to indicate that “the withdrawal is made conditional on it being received by the International Bureau in time to prevent international publication”; similarly, you could also add such a condition with a notice of withdrawal that you prepare yourself.
If you are not sure whether all signatures required to withdraw the international application are on file at the IB, you can, as a safeguard, also submit a power of attorney along with the notice of withdrawal. If you are using ePCT private services, you will have access to the documents on file at the IB and you can check the signature(s) on the request form and whether the IB has received any required powers of attorney. Note, however, that in any case, the IB would invite you to provide any missing signatures within a reasonable time limit while still maintaining the suspension of the publication.
For further information on the latest release of the ePCT system, see PCT Newsletter No. 10/2012, page 7. Further information on withdrawing the international application can be found in the PCT Applicant’s Guide, paragraphs 11.048 and 11.049.