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: I am the agent for an international application in respect of which, a day after filing the application, I realized that several pages of the claims were missing from the transmission. As I could not take advantage of incorporation by reference since the international application does not claim priority of an earlier application, I thought that the simplest option for me to remedy the situation would be to immediately re-file the application in its entirety, even if this meant getting an international filing date of one day later. As far as the initial application is concerned, could I simply let it lapse by not paying the international fees, in which case the receiving Office will declare that the international application is considered withdrawn due to lack of payment of fees (PCT Article 14(3)(a))? This would dispense with both the need to obtain the signature of the applicant (there being no power of attorney on file) and the need to actively withdraw the application.

A: Not paying the fees related to the filing of the international application within the time limit prescribed should result in your application eventually being considered withdrawn by the receiving Office (RO), and the RO should so declare. According to PCT Rule 16bis, where the transmittal fee, the international filing fee and the search fee have not been paid within one month from the date of receipt of the international application (see PCT Rules 14.1(c), 15.3 and 16.1(f)), the RO invites the applicant under PCT Rule 16bis.1(a) to pay to it the amount required to cover those fees, together with, where applicable, the late payment fee under PCT Rule 16bis.2, within a time limit of one month from the date of the invitation. Where the applicant does not, within the time limit set in the invitation, pay in full the amount due, the RO declares the international application withdrawn (PCT Article 14(3)(a) and PCT Rules 16bis.1(c) and 29.1) and informs the applicant accordingly (Form PCT/RO/117 (Notification that international application considered to be withdrawn)).

Note, however, that it is not advisable to simply wait for the RO to consider your international application withdrawn for lack of payment of fees if you no longer wish to proceed with it, as there are risks associated with proceeding in this way. In the past, the following scenarios have occurred, which, in some cases, might have led to the publication of an application that the applicant had presumed to be withdrawn:

– the RO sent the invitation to pay the fees to the applicant, but failed to follow up on that invitation by declaring that the application was considered withdrawn;

– the RO failed to notify the International Bureau (IB) that the international application was considered withdrawn; or

– the RO did notify the IB that the international application was considered withdrawn, but the notice failed to reach the IB in time to prevent international publication of the international application.

It is more prudent, and indeed a best practice, to actively send a notice of withdrawal if you no longer wish to proceed with the international application, even if this means having to obtain the applicant’s signature on either the power of attorney appointing you or the notice of withdrawal itself.

If the IB has not yet received the record copy (you are notified of this via Form PCT/IB/301), the notice of withdrawal should be sent to the RO, preferably electronically or by fax where possible. However, if the IB has already received the record copy of the international application, it is advisable to submit the notice of withdrawal to the IB rather than to the RO so as to avoid any unnecessary delays, especially if you want to ensure that the international application is not published by the IB before the notice of withdrawal has been forwarded to the IB by the RO.

If the IB has already received the record copy, withdrawing an international application is particularly simple if you use the ePCT public or private services to submit your notice of withdrawal online to the IB. If you have access to ePCT private services, you can withdraw the international application by simply selecting the relevant eAction tab (“Withdraw IA”). If you only have access to ePCT public services, you can 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. You can also submit a power of attorney via ePCT services. By using ePCT services in the above ways, you will get rapid confirmation that the withdrawal has been effected. It is important, nevertheless, to check whether you have received such confirmation of withdrawal from the IB. If you do not receive such confirmation within 48 hours following a withdrawal sent in any of the above ways, you should contact the IB to follow this up.

Full details concerning the use of the ePCT system to submit withdrawals, including information on creating a WIPO user account which is necessary for using the system, were included in the “Practical Advice” published in PCT Newsletter No. 11/2012 at:

https://www.wipo.int/edocs/pctndocs/en/2012/pct_news_2012_11.pdf

If you are still filing documents on paper, then it is recommended that you use Form PCT/IB/372 for notifying the withdrawal of the application. The form should be duly signed and preferably faxed to the number indicated on the form.

Please be aware that no fees are payable for withdrawing the international application and by doing so, there is of course still no need to pay the international fees which are due upon filing. By withdrawing your international application you will be more confident that the withdrawal has been recorded, although you should, nevertheless, always check that any withdrawal is confirmed by the Office to which it was sent. Note that if you had already paid the international fee and search fee upon filing, those fees would be refunded if you withdraw the international application, provided that the withdrawal is notified before the record copy is sent to the IB and before the search copy is sent to the International Searching Authority.

If, for some reason, you do not wish to withdraw the international application, but you wish the RO to consider it withdrawn for lack of payment of fees, then you must be very careful to track whether the RO actually goes ahead and acts as required. One action you could take is to proactively respond to the invitations to pay fees issued by the RO (Forms PCT/RO/102 (Notification concerning payment of prescribed fees) and PCT/RO/133 (Invitation to pay prescribed fees together with late payment fee)) saying something to the effect that no fees, including the late payment fee, will be paid and that the applicant fully expects that the RO will declare the international application withdrawn for failure to pay fees. As stated above, proceeding in this way is not advisable, but if pursued, the applicant should, nevertheless, carefully monitor the application to ensure that the RO actually proceeds with the withdrawal of the application.

For further information on withdrawing the international application, see PCT Applicant’s Guide, International Phase, paragraphs 11.048 and 11.049, and PCT Rule 90bis.