Recommendation of Modified Practices to PCT Offices by International Bureau in Light of the COVID-19 Pandemic
1. PCT Rule 82quater.1 (Excuse of Delay in Meeting Time Limits) applies in the current circumstance of global COVID-19 pandemic, and the International Bureau of WIPO has urged all PCT Offices and Authorities to likewise adopt this interpretation.
The said Rule provides for excuse of delay in meeting PCT time limits (which may relate to the submission of documents and/or the payment of fees), due to reasons offorce majeurebe it “war, revolution, civil disorder, strike, natural calamity… or other like reason”).
The position of the International Bureau of WIPO is that the current global pandemic should be considered to be a “natural calamity …. or other like reason”
2. The International Bureau of WIPO, including in its role as receiving Office, shall treat favorably anyRule 82quaterrequest made citing COVID-19 related issues and not require evidence to be provided that the virus affected the locality in which the interested party resides.
The International Bureau of WIPO has urged PCT Offices and Authorities to do likewise.
3. Rule 82quater.1 would not be an effective remedy in a situation in which an international application had lost its legal effect as a result of having been declared considered withdrawn for example, for having failed to pay the appropriate fees within the prescribed time limit.The receiving Office of the International Bureau of WIPO has decided to delay the issuance of any such notifications (Form PCT/RO/117 - NOTIFICATION THAT INTERNATIONAL APPLICATION CONSIDERED TO BE WITHDRAWN) until May 31, 2020, and the International Bureau of WIPO urges all PCT receiving Offices to adopt the same practice.
4. The applicant would normally be required to present evidence to the relevant Office not later than six months after the expiration of the applicable time limit, in addition to having taken the relevant action as soon as reasonably possible. It would be up to the relevant Office to decide if the failure to meet the time limit is excused according to the Rule.
5. Reinstatement of PCT applications which have lost their legal effect during the international phase is not provided for in the PCT legal framework.
6. For applicants paying a filing or search fee in an equivalent amount, the appropriate fee is the equivalent amount published in the PCT Newsletter effective on the date of the original filing of the application.
7. It has been further recommended by the International Bureau of WIPO that:
a. for at least one further month (potentially to be further extended), such notifications should only be issued in relation to deadlines which have expired over two months previously; and
b. receiving Offices waive the charging of late payment fees under PCTRule16bis.2 which states that the payment of fees in response to an invitation under Rule 16bis.1may be subjected by the receiving Office to the payment to it, for its own benefit, of a late payment fee. The amount of that fee shall be:
(i) 50% of the amount of unpaid fees which is specified in the invitation, or,
(ii) if the amount calculated under item (i) is less than the transmittal fee, an amount equal to the transmittal fee.
The amount of the late payment fee shall not, however, exceed the amount of 50% of the international filing fee referred to in item 1 of the Schedule of Fees, not taking into account any fee for each sheet of the international application in excess of 30 sheets.
Rule 82quater- Excuse of Delay in Meeting Time Limits
(a) Any interested party may offer evidence that a time limit fixed in the Regulations for performing an action before the receiving Office, the International Searching Authority, the Authority specified for supplementary search, the International Preliminary Examining Authority or the International Bureau was not met due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communications services or other like reason in the locality where the interested party resides, has his place of business or is staying, and that the relevant action was taken as soon as reasonably possible.
(b) Any such evidence shall be addressed to the Office, Authority or the International Bureau, as the case may be, not later than six months after the expiration of the time limit applicable in the given case. If such circumstances are proven to the satisfaction of the addressee, delay in meeting the time limit shall be excused.
(c) The excuse of a delay need not be taken into account by any designated or elected Office before which the applicant, at the time the decision to excuse the delay is taken, has already performed the acts referred to in Article 22 or Article 39.