PCT Newsletter Highlights for April 2004

Brazil Relaxes National Phase Deadline

 

On April 30, 2004, Brazil withdrew its notification of the incompatibility of its national laws with PCT Article 22(1).  The new 30-month time limit for entering the National Phase in Brazil under PCT Article 22(1) applies to international applications for which the 20-month time limit expired on or after that date.  

 

Now that Brazil has withdrawn its notification of incompatibility, the only remaining designated Offices that do not yet apply the 30-month time limit Article 22(1) are 

CH Switzerland*

FI Finland*

LU Luxembourg*

SE Sweden*

TZ United Republic of Tanzania*

UG Uganda*

YU Serbia and Montenegro

ZM Zambia*

However, for regional designations of those States marked with an asterisk, the 31-month time limit under PCT Article 22(3) applies. 

 

A complete list of time limits applicable for each designated/elected Office for entering the national phase under Chapters I and II of the PCT is available at www.wipo.int/pct/en/access/legal_text.htm

 

            Practical Advice on Designation Withdrawals

 

There is no obligation to formally withdraw a designation if you do not intend to enter the national phase in the State concerned. However, under certain circumstances it may be advisable to withdraw certain designations because the of some States provide for automatic withdrawal of an earlier national application if a later international application claims priority of that earlier national application and designates the country concerned.

 

By not performing the acts necessary under PCT Article 22 (for National Phase entry) or Article 39(1) (for International Preliminary Examination) within the applicable time limit for entry into the national phase in that State, your international application will simply cease to have any effect in that State (under PCT Article 24(1)(iii)), with the same consequences as the withdrawal of a national application in that State.  Therefore, by simply not taking any action to enter the national phase within the prescribed time limit, you will avoid having to send a notice of withdrawal, and you will also avoid having to furnish the signatures of all the applicants which will be required to make such a withdrawal (unless they have previously appointed the agent or common representative submitting the withdrawal). By not withdrawing the designation, you will also be keeping your options open in case you change your mind and decide to enter the national phase in the designated State.    

 

Once a designation has been withdrawn, the effect of the international application in that State ceases (see PCT Article 24(1)(i)), and, although it would depend on the national law of the State concerned, you would normally not be able to enter the national phase in that State.  Nonetheless, under certain circumstances it may be advisable to withdraw designations.  

 

For example, some States provide for automatic withdrawal of an earlier national application if a later international application claims priority to that earlier national application and designates the country concerned. The earlier national application will therefore be withdrawn if the designations concerned are not withdrawn from the international application.  Germany, the Republic of Korea and the Russian Federation have notified WIPO under PCT Rule 4.9(b) that this situation applies to them. For these three States, a special check-box has been made available in Box No. V of the Request Form enabling applicants to exclude those States from the automatic and all inclusive coverage of designations, without having to specifically withdraw them.

 

However, Japan, and any other States which have similar provisions under their national law, cannot be excluded in the Request Form.  A separate notice of withdrawal of the designation must therefore be submitted, preferably preferably at the same time as the Request, in order to avoid the automatic withdrawal of the earlier filed national application.  In particular for Japan, the withdrawal should be made before within 15 months of the priority date. Information on such situations is published in the PCT Applicant’s Guide, Annex B1.

 

For more of the latest news about the PCT system, please contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.