PCT Newsletter 01/2010: Practical Advice

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.

Expiration of a time limit where an Office is situated in more than one locality

Q:  I filed a demand for international preliminary examination with the European Patent Office (EPO) in Munich on 7 January 2010.  I would normally have filed it with the EPO in The Hague, but, since I had just missed the time limit for filing the demand, which expired on 6 January 2010, I filed it by fax with the Munich Office, which was not open for business on 6  January.  By doing this, I knew that, given that the Munich Office was closed on that day, the time limit would be extended by a day, to 7 January, and my demand would be considered to have been received on time.  I wondered whether my demand would have been considered as filed after the applicable time limit if it had been filed with the EPO at The Hague, which was not closed on 6 January, or whether it would have been considered as having being received on time?

A:  Any time limits for the filing of a document with, or for the payment of a fee to, the EPO, which would normally have expired on 6 January 2010, will have been extended to 7 January, irrespective of whether the demand was filed with the Office in Munich, The Hague or Berlin.  Therefore, even if you had filed your demand at the Office at The Hague, it would have been considered as having being received within the applicable time limit.¹

This situation is covered by PCT Rule 80.5(iii), and also by the European Patent Convention.  Since you filed with the Munich Office (that is, the Office which was actually closed), the time limit will have been extended in accordance with PCT Rule 80.5(i), which states that if the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day on which such Office or organization is not open to the public for the purposes of the transaction of official business, the period shall expire on the next day on which none of the circumstances mentioned in PCT Rule 80.5 exist.  However, if you had filed with one of the Offices in The Hague or Berlin, this would have fallen under the provisions of PCT Rule 80.5(iii), which states that if the expiration of any period during which any document or fee must reach a national Office or intergovernmental organization falls on a day which, where such Office or organization is situated in more than one locality, is an official holiday in at least one of the localities in which such Office or organization is situated, and in circumstances where the national law applicable by that Office or organization provides, in respect of such national applications, that, in such a case, such period shall expire on a subsequent day, the period shall expire on the next day on which none of the circumstances mentioned in PCT Rule 80.5 exist.

In the case of the EPO, the relevant national law is Rule 134(1) of the European Patent Convention, which states that where a time limit expires on a day on which one of the filing offices of the EPO is not open for receipt of documents, the time limit is extended until the first day thereafter on which all the filing offices are open for receipt of documents.

Note that where a Contracting State has more than one Office or address for correspondence, PCT Rule 80.5(iv) may apply where there is an official holiday in part of that Contracting State, as long as the national law applicable by that Office provides, in respect of national applications, that, in such a case, such period shall expire on a subsequent day.  For example, as far as Canada is concerned, the Canadian Intellectual Property Office (CIPO) itself is in the province of Quebec, but there are various designated establishments in other parts of the country which receive correspondence addressed to the Commissioner of Patents.  One such establishment is Industry Canada in Toronto, which is in the province of Ontario;  this may have different official holidays from the province of Quebec, where CIPO is located.  PCT Rule 80.5(iv) may therefore be applied at times when designated establishments have different official holidays from CIPO.  For specific information about the meeting of time limits which expire on a day on which a statutory holiday falls in Canada, see:

http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00823.html

It is recalled that annual lists of closing dates of industrial property Offices, wherever they have been made available to the International Bureau, have been published on the WIPO website at:

https://www.wipo.int/pct/en/closeddates/index.html

Where available, the dates for any separate branch Offices are also given.

1          The time limit for filing a demand is three months from the date of transmittal to the applicant of the international search report (or the declaration referred to in PCT Article 17(2)(a)) and of the written opinion established under PCT Rule 43bis.1, or 22 months from the priority date, whichever expires later (PCT Rule 54bis.1(a)).  However, if the applicant wishes to benefit from the time limit for entry into the national phase under PCT Article 39(1) in certain States for which the 30-month time limit under PCT Article 22(1) is not applicable, the demand should be filed  prior to the expiration of the 19^th month from the priority date.