Introduction

Patent Cooperation Treaty (PCT), an alternative to Paris Convention for filing of patent applications in more than one country, provides numerous advantages over the latter. However, the PCT system is only a patent "filing system", not a patent "granting system", hence, there is no "PCT patent", "global patent" or "international patent". Being a patent filing system, the PCT regulations also allow withdrawals of the PCT applications and other requests from the PCT system. The PCT Rule 90 bis1 lays down regulations for withdrawals permitted under PCT system. There are different types of procedural withdrawals permitted under the PCT regulations. The withdrawals are occasionally useful in taking strategic and financial decisions for a patent application or a patent portfolio. Therefore, there is a need to have a clear understanding of the permitted withdrawals and related regulations.

Withdrawal of the International Application

The International Applications filed under the PCT system can be withdrawn according to Rule 90bis.1 of the PCT Regulations. The applicant can withdraw the international application any time before the expiration of the period of 30 months from the date of priority. A notice addressed by the applicant to the International Bureau or to the receiving office is required for the withdrawal to be effective. If the notice of withdrawal reaches the International Bureau before the completion of technical preparations for international publication, then there will be no international publication of the application. This might be useful for the applicant to prevent the international publication of the application which has received negative opinion from the International Searching Authority.

Withdrawal of the Designation

The PCT system allows the withdrawal of designation for any of the designated state under Rule 90bis.2 of the PCT Regulations. The applicant can withdraw the designation for any of the designated state before the expiration of the period of 30 months from the date of priority. The withdrawal of the designation of a state shall also result in the withdrawal of any demand or election. If the applicant withdraws designation for all of the designated states then it is considered as withdrawal of the international application. The withdrawal of designation of the designated state is effective from the date of receipt of notice addressed by the applicant to the International Bureau or to the receiving office. If the notice of withdrawal reaches the International Bureau before the completion of technical preparations for international publication, then there is no international publication of the withdrawn designation.

Withdrawal of the Priority Claims

Under Rule 90bis.3 of the PCT Regulations, the applicant is allowed to withdraw the priority claim or declaim the claimed priority any time before the expiration of the period of 30 months from the date of priority. If the international application is claiming priority from multiple applications, then the applicant can withdraw more than one priority claim or all the priority claims. A notice addressed by the applicant to the International Bureau or to the receiving office is required for the withdrawal to be effective. If the notice of withdrawal reaches the International Bureau before the completion of technical preparations for the international publication, then there shall be no international publication of the withdrawn priority claims. When the withdrawal of priority claim results in change of the priority date then the time limits, which are not expired are computed from the new priority date. This regulation provides various strategic advantages to the applicant for the modification of his patent portfolio. This regulation provides an opportunity to the applicant to advance the priority dates. The applicant can withdraw the priority claim and priority application before the publication to use modified date of priority for claiming priority while filing new applications.

Withdrawal of the Demand or Elections

Under Rule 90bis.4 of the PCT Regulations, the applicant can withdraw the demand or elections any time before the expiration of the period of 30 months from the date of priority. A notice addressed by the applicant to the International Bureau is required for the withdrawal to be effective. If the applicant submits the notice to the International Preliminary Examining Authority, the authority transmits the notice to the International Bureau. The International Bureau then considers the notice to be submitted on the date on which it was received by the International Preliminary Examining Authority.

It is important to note that for the applications having more than one applicant, any notice of withdrawal is required to be signed by all the applicants. In such cases, the applicant who is considered common representative is not entitled to sign any withdrawal notice on behalf of the other applicants.

Conclusion

The PCT system provides an alternative route for filing of patent applications in more than one country. It is necessary to understand the PCT Regulations in detail for better planning of the IP assets and developing an effective patent portfolio.

Footnote

1 https://www.wipo.int/pct/en/texts/rules/r90bis.html

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.