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.
Q: As the agent for an international application, I wish to withdraw the (only) priority claim in the application in order to delay entry into the national phase. However, the time limit for withdrawing the priority claim expires in two days’ time, and unfortunately, there is no power of attorney on file, and I am unable to reach the applicant to obtain his signature of the notice of withdrawal. I wondered whether I could submit, today, to the International Bureau via ePCT document upload, a notice of withdrawal of the priority claim signed by me, and then submit a power of attorney at a later date, as soon as I have been able to reach the applicant. If I do this, will the IB consider the notice of withdrawal to have been received on the date on which the notice was received, and therefore within the applicable time limit?
A: It is important to be aware that, in order for a notice of withdrawal of a priority claim (as well as any other notice of withdrawal under PCT Rule 90bis) to be effective, that notice must fulfill both of the following requirements:
– it must be received prior to the expiration of the applicable time limit (in the case of the withdrawal of a priority claim, this is 30 months from the priority date (PCT Rule 90bis.3(a));
– it must contain the required signature(s) (that is, it must be signed by, or on behalf of, the applicant). If the notice of withdrawal is signed by the agent on behalf of the applicant, and the agent has not yet been duly appointed by the applicant, the notice must be accompanied by a power of attorney appointing the agent, signed by the applicant (PCT Rule 90bis.5).
Therefore, even if the notice of withdrawal of the priority claim is received by the International Bureau today (regardless of the means by which that notice is submitted), it is the date on which both of the above-mentioned requirements have been met that will be considered to be the date of receipt of the notice. The notice of withdrawal will therefore not be taken into account if the signed power of attorney is not furnished prior to the expiration of 30 months from the priority date.
It should be noted that, in cases where there is more than one applicant in the international application, including where there are applicant/inventors (which is particularly relevant in the case of international applications filed before the relevant provisions of the America Invents Act entered into force on 16 September 2012), the signature of all other applicants would also be required in order for the notice of withdrawal to be effective.
It is therefore very important to ensure that any form of withdrawal under PCT Rule 90bis is accompanied by all necessary signatures, and in any case, should be notified to the International Bureau in plenty of time before the expiration of the applicable time limit, in order to allow extra time in case of procedural or technical problems.
Note also that, even if the requirement to submit a power of attorney has been waived (under PCT Rule 90.4(d) and/or 90.5(c)) by the receiving Office with which you filed the international application, you should always carefully consider whether you should nevertheless obtain the signature(s) of the applicant(s), either by the signature of a power of attorney or by the signature of the request. By obtaining that/those signature(s), any withdrawal under PCT Rule 90bis, which requires the signature of all applicants or a power of attorney signed by all of the applicants, can be dealt with immediately, and delays caused by the need to obtain missing signatures would be avoided. Even if the signature(s) is/are not actually submitted to the receiving Office, but is/are merely kept in the file of the agent, at least it/they would be available if needed later in the procedure.
If you are unable to obtain the necessary power of attorney before the expiration of the time limit of 30 months from the priority date, the priority claim will not be withdrawn and you will generally have to enter the national phase at 30 months from the priority date, unless any of the Offices before which you wish to enter the national phase provide for a longer time limit under their applicable national law. For information about any extensions to the 30-month time limit, see the table of “Time Limits for Entering National/Regional Phase under PCT Chapters I and II” at:
Date retrieved: 30 December 2018