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.
Entitlement to reductions in PCT fees for applicants from certain countries
Q: I am a national and resident of Slovenia and I am planning to file an international application (as sole applicant) with the Slovenian Intellectual Property Office as receiving Office. I have heard that Slovenia will be added to the list of States whose nationals and residents are entitled to a 90% reduction in the international filing fee as from 1 July 2015. As I wish to claim priority of an earlier application filed on 20 June 2014, I will have to file my international application by 20 June 2015 at the latest. If I file my application before 1 July 2015, will I be able to pay a reduced fee if I actually make the fee payment after 1 July?
A: As you are aware, revisions to the eligibility criteria for certain fee reductions were made during the 46th session of the Assembly of the PCT Union (PCT Assembly) which was held in September 2014. Slovenia was indeed added, together with the PCT Contracting States of Cyprus, Greece, Malta, Portugal and Saudi Arabia, and the non-PCT Contracting States of the Bahamas, Nauru, Palau and Suriname1, to the list of States, the nationals and residents of which may benefit from a 90% reduction in the international filing fee, the supplementary search handling fee, and the handling fee, as prescribed under item 5(a) of the PCT Schedule of Fees (see PCT Newsletter No. 10/2014, cover page). The date of entry into force of the amendments to the Schedule of Fees is 1 July 2015.
Although the date of entry into force of the amended Schedule of Fees, including the revised list of States eligible for the above fee reductions, is 1 July 2015, in the case of the reduction in the international filing fee, the revised Schedule of Fees will apply only in respect of international applications received by the receiving Office on or after 1 July 2015. (According to PCT Rule 15.3, the amount of the international filing fee that is payable shall be the amount applicable on the date of receipt of the international application by the receiving Office.) Therefore, regardless of when you pay the fees, the Schedule of Fees as in force until 30 June 2015 will apply in respect of your application, which means that you will not be entitled to the 90% reduction in the international filing fee. Note that even if an international application is received by the receiving Office before 1 July 2015 but is given a later international filing date which falls on or after 1 July 2015 (for example, in the case where missing drawings are furnished later), the current (pre-July 2015) Schedule of Fees will apply for payment of that fee.
Note, however, that if you request a supplementary international search or file a demand for international preliminary examination you would, irrespective of when that request or demand is submitted, be able to pay the reduced amount of the fees payable for the benefit of the International Bureau (IB), that is, the supplementary search handling fee and the handling fee, respectively, if the fee concerned is paid on or after 1 July 2015. (According to PCT Rules 45bis.2(c) and 57.3(d), the amounts payable for those fees are the amounts which are applicable on the date of payment of the fees).
For further details, including background information regarding the amendment to the Schedule of Fees, see the following PCT Assembly documents: Proposed Amendments to the PCT Regulations (document PCT/A/46/3) and the Report (document PCT/A/46/6, paragraphs 15 to 17, and Annexes I and II) at:
https://www.wipo.int/meetings/en/details.jsp?meeting_id=33287
For a full list of States the nationals and residents of which are entitled to the fee reduction indicated under item 5(a) and (b) of the Schedule of Fees, see:
https://www.wipo.int/pct/en/fees
The above-mentioned web page contains links to the currently applicable list as well as the list which will be applicable on or after 1 July 2015. Note that the list which will become applicable on 1 July 2015 will be applicable for the next five years, subject to possible addition of States to the list in the interim, where the applicable conditions are met and where the State concerned makes a request to the Director General of WIPO to be included in the list.
To benefit from a reduction in the international filing fee for electronic filings (under item 4 of the Schedule of Fees), you may wish to consider filing your international application in electronic form (for example, using the ePCT-Filing system) with the IB or the European Patent Office as receiving Office, subject to any filing restrictions which may apply under your country’s national legislation.
______________
- It is recalled that applicants from non-PCT Contracting States must file the PCT application together with an applicant who is a national of and/or resides in a PCT Contracting State, and may only benefit from the fee reduction if that applicant is also entitled to the fee reduction.