PA 11/2008: Payment of fees to the International Bureau as receiving Office when filing international applications with that Office on a regular basis

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.

Practical Advice

Q:  The company I work for files several international applications a month, and since our usual receiving Office does not accept international applications filed electronically, we have decided to start filing our international applications electronically with the International Bureau as receiving Office;  by doing this, we will be able to benefit from the fee reductions associated with filing applications electronically. Given that we will have to pay fees to the International Bureau as receiving Office on a regular basis, is it possible to open an account with the International Bureau for that purpose, and would that account serve for the payment of other fees to WIPO?

A:  It is possible to open a current account in Swiss francs with WIPO, and to authorize the charging of that account when paying fees to the International Bureau as receiving Office (RO/IB), and may be worthwhile to do so if you file international applications on a regular basis with the RO/IB.  Please be aware that the holding of an account at another receiving Office is not sufficient to enable payments to be made to the RO/IB – you must hold an account with WIPO. 

One advantage of having a current account with WIPO is that it facilitates fee payments as there is a section on the fee calculation sheet annexed to the request form specifically for authorizing the receiving Office to charge the applicant’s account at WIPO. If the filing is made using the PCT-SAFE software, whether filing in fully electronic form or on paper with the request in PCT-EASY format, the PCT-SAFE software also allows applicants to authorize the charging of their WIPO account (see the “Payment” page of the Electronic Request).

Furthermore, if you have a WIPO current account and have marked the appropriate check-box of the fee calculation sheet (the second check-box in the authorization section) or selected the appropriate box in the above-mentioned payment page of the PCT-SAFE software, and there is a mistake in the calculation of the fees due upon filing, the receiving Office will be authorized to charge any deficiency (or credit any overpayment, as the case may be) in the fees you have calculated, without the need for it to invite you to pay the extra amount, and for you to arrange for a second payment.  This saves time and effort for both parties, and reduces the risk of loss of rights for the applicant.  Each time fees have been charged to your account, you will receive confirmation of payment by way of Form PCT/RO/102.

Note that, although current accounts at WIPO are held in Swiss francs only, deposits are accepted in other currencies, provided that that currency is freely convertible into Swiss francs – the amount of that deposit would then be converted into Swiss francs according to the prevailing rate of exchange. 

If you hold a current account, you must ensure that you have adequate funds to cover all charged fees.  Thus, the amount that you credit to the account will need to be sufficient to cover international filing and search fees. 

A current account at WIPO can also be used for other purposes, for example:

–  the payment of other RO/IB fees, such as the fee for the establishment of a priority document by that Office (PCT Rule 21.2);

–  the payment of fees to the IB other than in its capacity as receiving Office, such as the early publication fee (PCT Rule 48.4(a));

–  the payment of fees related to other forms of intellectual property protection, for example the registration of marks under the Madrid System or the registration of industrial designs under the Hague System; or

–  the purchase of WIPO publications.

If you wish to make use of your WIPO current account to pay fees other than those which are due upon filing a PCT application (and are therefore not making use of the authorization boxes on the fee calculation sheet or in the PCT-SAFE software), a written authorization must be made which should clearly identify the purpose of the payment, the number of your WIPO current account, and, where applicable, any particulars necessary to identify the application in respect of which payment is being made, namely:  the name of the applicant, the file reference or, if known, the international application number.

Note that the following modes of payment to WIPO are also possible:

–  by bank transfer to WIPO's bank account (for payments in Swiss francs, US dollars or euro);

–  by credit card (in the case of PCT applications filed with the RO/IB, using Form PCT/RO/197;  if using the PCT-SAFE software, that software provides for a secure means for furnishing the credit card details to the RO/IB);

–  by transfer to WIPO's postal account (for payments in Swiss francs only);

–  by check made payable to the World Intellectual Property Organization (for payments in Swiss francs, US dollars or euro) (consideration is currently being given to the elimination of this payment method).

For further details on how to pay using the above-mentioned modes of payment, see:

http://www.wipo.int/pct/en/filing/modes.htm

and for information specifically about the opening of a current account at WIPO, see:

http://www.wipo.int/pct/en/filing/account.htm

or contact our finance department by e-mail at:  income.accounts@wipo.int

2 references found.

Click X to load a reference inside the current page, click on the title to open in a new page.

PCT Implementing Rules