WIPO – COVID-19 Update
The International Bureau of WIPO has issued an update directing users to Rule 82quater of the Patent Cooperation Treaty (PCT), which provides for excuse of delay in meeting PCT time limits – particularly delays in submitting documents and/or the payment of fees. WIPO acknowledges that the current Covid-19 situation would fall within the category of ‘natural calamity’.
The update explains that the International Bureau will treat favourably any request under Rule 82quater that cites Covid-19 related issues, without requiring specific evidence that the locality of the relevant party is affected by the virus. This marks a change from previous guidance, which suggested that evidence such as an official announcement, or evidence from a certified physician would be required.
In order to make use of this provision, the relevant party – within six months of the original deadline – must provide evidence that the original deadline was not met and that the relevant action (i.e. submission of documents, payment of fees, etc.) was taken as soon as reasonably possible.
One notable limitation is that Rule 82quater is not an effective remedy in situations where an International application loses its legal effect as a result of having been declared considered withdrawn – for example, due to non-payment of appropriate fees in response to an invitation from a receiving Office to correct deficiencies in an application.
To mitigate this issue, the International Bureau has notified users that the issuance of invitations to correct deficiencies will be delayed until 31 May 2020, and has urged all receiving Offices to do the same. Additionally, for at least one further month, the International Bureau has recommended that such invitations should only be issued in respect of deadlines that expired over two months previously.
The International Bureau has also requested that receiving Offices waive the charging of late payment fees during this time.
One important point to note is that the announcement of the International Bureau applies only to missed deadlines in the International Phase of a PCT application. It does not provide any special remedy for missed deadlines in the National or Regional Phase, including the deadline for entry into National/Regional Phases at individual Offices. For missed deadlines of this nature, any remedies (prescribed or discretionary) are set by the individual National or Regional Offices.
The new measures announced by the International Bureau should provide applicants with more flexibility in these difficult times, and are greatly welcomed. However, we request that applicants continue to work towards any original deadlines wherever possible.