V.1. V.1.1. Time limits under the PCT The following sections relate to the computation of time limits (expressed in years, months or days), and to the possibility of extending them. Note that the following sections concern time limits under the PCT. Once an application has entered the regional phase before the EPO, the provisions of the EPC are applicable. For computation of time limits under the EPC, reference is made to the EPO Guidelines E-I, 2 and E-VII, 1. Note also that, although similarities exist between the computation of time limits under the PCT and under the EPC, notable differences also exist. For example, time limits triggered by notifications are computed differently (see V.1.3.2). Computation of time limits Art.47(1) PCT The details regarding the computation of time limits are laid out in the regulations. Time limits set in communications Euro-PCT Guide 40 Where a time limit starts to run upon issue of a communication, the date of that communication is used to calculate the time limit (not the date of its receipt). Euro-PCT Guide 41 However, if the applicant proves to the EPO (as RO, ISA, SISA or IPEA) that the communication was not despatched on the date which it bears, the actual date of mailing will be used to calculate the time limit. Time limits expressed in years R80.1 PCT Time limits expressed in years: - start to run the day after the relevant event*; - expire on the relevant subsequent year on the same day of the year as the relevant event*, provided that, if that date of the subsequent year does not exist (i.e. 29.Feb), then the time limit expires on the last day of the month (i.e. 28.Feb) * The "relevant event" is the event from which the time limit is calculated. Example According to R93.1 PCT, the RO must keep records of applications filed there for 10 years from the filing date. The ten year period starts to run the day after the filing date. For example: 25.03.1992 filing date 26.03.1992 Start of the 10 year period during which the RO is obliged to keep records of the International application after its filing. 25.03.2002 Expiry of the 10 year time limit under R93.1 PCT (the RO may destroy the records after this date). Time limits expressed in months R80.2 PCT Time limits in months: - start to run on the day after the relevant event*; - expire on the relevant following month on the same day as the relevant event*, provided that: if that month has no day with that number, then the time limit expires on the last day of that month. [e.g. a 1 month time limit starting on 31.Mar expires 30.Apr] * The "relevant event" is the event from which the time limit is calculated. Example The applicant must reply to a written opinion within a time limit set by the IPEA at three months (the IPEA can set a time limit from 1-3 months according to R66.2(d) PCT): 11.05.2000 written opinion sent, three month time limit set (R66.2(d) PCT) 12.05.2000 time limit starts to run 11.08.2000 time limit expires Another example: 31.05.2000 written opinion sent, one month time limit set (R66.2(d) PCT) 01.06.2000 time limit starts to run 30.06.2000 time limit expires (curtailed because this month has no 31st day) Time limits expressed in days R80.3 PCT Time limits expressed in days: - start to run the day following the date on which the relevant event occurred*; - expire on the day on which the last day of the count has been reached. * The "relevant event" is the event from which the time limit is calculated. Example Where the Demand is submitted to the IB, the applicant must indicate within 15 days of an invitation from the IB according to R59.3(c)(ii) PCT, which IPEA is competent. 2015 - Peter Watchorn & Andrea Veronese 431
03.09.2009 date of invitation 04.09.2009 time limit for reply starts to run - 15 days (R59.3(c)(ii) PCT) 18.10.2009 time limit expires Local dates for starting time limits R80.4(a) PCT The date for computing the starting date of any time limit is the date in the place where the relevant event occurred. Given the global nature of the PCT, time zones can cause date differences between one location and another. Local dates for expiry of time limits R80.4(b) PCT The date on which a time limit expires is that in the place where the document must be filed, or where the fee payment must be made. V.1.2. End of the working day R80.7(a) PCT A time limit which expires on a particular day expires at the time when the office to which the document must be filed, or the fee must be paid, closes for business. Filing until midnight R80.7(b) PCT Any office may extend the time limit under R80.7(a) PCT to expire up to midnight on the relevant day. OJ S. 2007, A.3 The EPO makes use of this facility and accepts the filing of documents by fax right up to midnight of the day in question [see V.4.1]. According to R80.4(b) PCT, the date and time at which a time limit expires is that in the place where the document must be filed, or where the fee payment must be made. Consequently, the time at the EPO is what counts, not the time where the applicant or representative sending the fax is. Fax filed at EPO at midnight OJ S. 2007, A.3 However, where the International application is filed by fax, and - the fax transmission starts before midnight and continues past midnight, and - the documents received before midnight would satisfy Art.11(1) PCT to obtain a filing date*, then the applicant may request the EPO acting as RO to give the previous day as the filing date, provided he renounces those parts of the application received after midnight. * According to Art.11(1) PCT - The RO cannot accord a filing date until it has: V.1.3. V.1.3.1. - Indication that it is a PCT application (i.e. the Request, Art.11(1)(iii)(a) PCT) - One designation of a state - Applicant's name (Art.11(1)(iii)(c) PCT) - A description (Art.11(1)(iii)(d) PCT ) - At least one claim (Art.11(1)(iii)(e) PCT) The above may apply where the drawings and/or abstract are received after midnight, but the rest of the application is received beforehand. Since the drawings or abstract are not required to establish a filing date according to Art.11(1) PCT, they might be renounced by the applicant to get the filing date of the previous day (provided that the drawings are not essential to the disclosure of the claimed invention according to Art.5 PCT). The abstract is required [see I.9.2.4] but it can be supplied after the filing date [see I.9.3]. Extension of time limits Holidays at PCT authorities R80.5 PCT Where a time limit for paying a fee or filing a document at a PCT authority* expires on: (i) a day when that authority is not open to the public for official business; (ii) a day when ordinary mail is not delivered in the locality where that authority is situated; (iii) where the authority is situated in more than one locality**, on a day where at least one locality is closed and where the law of that office allows the time limit to expire on a subsequent day in respect of national applications; (iv) where the authority is the office of a PCT state, on a day which is an official holiday in a part of that state and where the national law provides that, in such cases, in case of national applications, time limits expire on a subsequent day; then the time limit expires on the next day where none of the above situations applies. R2.4(b) PCT R80.5 PCT applies mutatis mutandis to the priority period. * These authorities are, in particular, the RO, ISA, IPEA and IB. 432 2015 - Peter Watchorn & Andrea Veronese
V.1.3.2. Different EPO sites ** The EPO has three different sites where documents may be filed and payments made - The Hague, Munich and Berlin [these are the EPO filing offices R35(1) EPC]. The holidays at each site differ, for example 27.April (Koningsdag) and 05.May (Bevrijdingsdag) are both holidays at the EPO in The Hague, but not in Munich or Berlin. According to R134(1) EPC, if one of these three sites is closed, then time limits expire on the next working day when all of these offices are open. Consequently, according to R80.5(iii) PCT, the EPO applies the same principle when acting as a PCT authority (RO, ISA, SISA or IPEA). Where one of these offices is shut and the others are open, the time limit in the PCT is extended to expire on the next working day when all offices are open. Postal delays - late posting or late arrival of a document/notification at the applicant Art.47(1) PCT The details for computing time limits in the PCT are governed by the regulations. R92.3 PCT The following documents/letters shall be sent by air mail: - from or transmitted by a national Office or an intergovernmental organization, and, - constituting an event from the date of which any time limit under the Treaty or these Regulations commences to run. This is provided that surface mail may be used instead of air mail in cases where: - surface mail normally arrives at its destination within two days from mailing or - where air mail service is not available. Late posting by PCT authority R80.6 PCT If a time limit starts from the date of a document or letter from a national office or international organization, and an interested party can prove that it was posted later than the date which it bears, then, the actual date of mailing applies for computing time limits (calculated from the date of that document or letter). Late arrival at the applicant R80.6 PCT If the applicant can show that a letter or document arrived more than seven days after the date it bears (regardless of when it was posted), then the date of expiry of any time limit starting from the date of that letter or document is shifted forwards by the same number of days as the number of days the letter took to arrive minus seven. It is important to note here that the burden of proof is on the applicant to demonstrate the late delivery. Example of computation of 1-month time limit when a delay occurs [R80.6 PCT]: 01-01 date borne by letter 10-01 date of receipt The letter took nine days to arrive (the seven days starts from 02-01). 01-02 normal expiry date 03-02 R80.6 PCT expiry date (9-7 = 2 extra days) Here two days must be added to the end of the time limit. If the date 03-02 is a holiday (e.g. Sunday) it would appear that R80.5 PCT applies, in which case, the expiry date would then further shift to the next working day when normal post is delivered [see V.1.3.1]. However, this has not yet been clarified. Differences between EPC and PCT Note here that the EPC applies different provisions concerning the notifications from the EPO and calculation of time limits triggered by such notifications. In particular, notifications by post sent by the EPO are deemed notified to the addressee ten days after posting [R126(2) EPC - unless the letter arrives later than this] and this day triggers the start of the time limit calculated from that notification (see E-I, 2.3 and E-VII, 1.4). In this case, the time limit starts to run the day after the tenth day (irrespective of whether this is a holiday at the EPO). Furthermore, in the EPC according to R126(2) EPC it is incumbent on the EPO [not the applicant] to prove that the letter has arrived and on which day [where there is a dispute on the matter- E-I, 2.3]. V.1.3.3. Late arrival of applicant's submissions at PCT authority V.1.3.3.1. Art.48(1) PCT Posted five days before time limit expiry Where a time limit is failed due to interruption of the mail or unavoidable loss/delays in the mail, the time limit is deemed met, subject to the conditions set out in the regulations. 2015 - Peter Watchorn & Andrea Veronese 433
Late arrival - five day rule R82.1(a) PCT Any interested party can prove that he has mailed the letter or document five days or more before expiry of the time limit. This only applies where the letter or document was sent by: - airmail, and was registered with the postal authorities, or - other mail registered with the postal authorities, but only where: - surface mail normally arrives within two days, or - no airmail is available. R82.1(b) PCT If a party proves to the satisfaction* of the national office or international organisation which is the addressee, that the above conditions under R82.1(a) PCT were met, then the delay is excused. * This will depend on the evidence provided being sufficient to convince the office in question (e.g. RO, ISA, SISA, IPEA or IB) that the conditions of R82.1(a) PCT are met. Evidence can be registration with postal authorities, use of airmail or non-airmail services. Lost in mail - five day rule R82.1(b) PCT If a party proves to the satisfaction* of the national office or international organization to which a letter or document was addressed that: - the letter or document was posted at least five days before the expiry of the time limit under the conditions of R82.1(a) PCT [see above], and - that the item was lost in the mail, - and the party can prove that a replacement is identical to the lost item, then the replacement [of the lost document with a new copy] can be allowed. * According to R82.1(b) PCT this depends on the evidence provided being sufficient to convince the office in question (e.g. RO, ISA, SISA, IPEA or IB). Evidence required R82.1(c) PCT In order for a delay to be excused or a document to be replaced according to R82.1(b) PCT, the following evidence must be filed: - evidence of the date of mailing; - the substitute document or letter (in cases of loss); - proof that the substitute document or letter is identical to the original (in cases of loss). R82.1(c) PCT The above evidence must be supplied within the following period: - one month after the party noticed, or with due diligence should have noticed*, the delay or loss of the letter or document, but - no later than 6 months after expiry of the unobserved time limit. Noticing the failed time limit - PCT * The date when a party is considered to have noticed a delay is often considered to be the date on which the office in question informs the party of the delay e.g. by informing him of a loss of rights resulting from the late arrival of the document or letter. For example: (a) The applicant is invited under Art.14(1)(b) PCT, R26.1 PCT and R26.2 PCT by the RO to file corrections to the application (e.g. no title) within the time limit of two months (extendable). (b) The applicant files the corrected documents in time, but these are received late by the RO due to a postal delay. Due to the delay, the application is deemed withdrawn and the applicant is informed by the RO under R29.1(ii) PCT. The party (here the applicant) becomes aware (or should become aware) of the delay in the arrival of his corrected documents when he receives the notification of the RO's declaration of deemed withdrawal of the application. It would appear equitable in this case for the time limit according to R82.1(c) PCT to start running from this date. Noticing the failed time limit - EPC The EPC has a principle to excuse a missed time limit re-establishment of rights [formerly known as "Restitutio in Integrum"]. According to R136(1) EPC the applicant must file his request for re-establishment at most two months after the "removal of the cause of non-compliance" and complete the omitted act in the same period [this cannot be more than one year from the expiry of the missed time limit]. It is consequently important to establish when the "removal of the cause of noncompliance" actually occurred. The EPO Boards of Appeal have established in a number of cases that the "removal of the cause of non-compliance" 434 2015 - Peter Watchorn & Andrea Veronese
is when the applicant is made aware of the loss or rights (J27/88, T191/82, T287/84, J27/90) arising from his failure to observe the time limit. The above decisions found that this two month period for applying for re-establishment of rights and completing the omitted act according to R136(1) EPC starts to run from this date. In the PCT, if the same principle were applied by the EPO, then the declaration of deemed withdrawal of the application as communicated to the applicant could be considered to be the relevant date for calculating the time limit according to R82.1(c) PCT. This has to the authors knowledge, however, not been officially instigated as a policy by the EPO. Delivery services (DHL etc) R82.1(d) PCT Any national office or international organisation can apply the provisions of R82.1 PCT to delivery services other than postal authorities. - The office may indicate that only specific delivery services or services which satisfy certain criteria are accepted. - This information is published by the IB in the Gazette. R82.1(d) PCT Where an office has informed the IB that it accepts the application of R82.1(a) PCT to such delivery services, then it is obliged* to do so. * The obligation only relates to those delivery services which the office in question has indicated to the IB it will accept for the application of R82.1(a) PCT. R82.1(d) PCT If an office uses this facility, it is not necessary for the delivery to have been registered by the postal authorities (it cannot be if not sent via them). Instead, details of the mailing must be recorded by the delivery service itself at the time of mailing. EPO-accepted delivery services OJ 2015, A29 The EPO allows the excuse of late delivery of post according to R133 EPC when these are sent via the following : - Chronopost - DHL - Federal Express - flexpress - TNT - SkyNet - UPS - Transworld Euro-PCT Guide 67 The above list of delivery services is also applied by the EPO as a PCT authority according to R82.1(d) PCT. Case by case basis R82.1(b) PCT & RO-GL 29 ROs which have informed the IB that they do not apply R82.1 PCT to delivery services, may still apply this rule on a case-by-case basis where a delivery service has been used. This means that an applicant who has used such a delivery service for filing documents at an RO, which normally does not apply R82.1 PCT to such services, may try to get the RO to accept the application of R82.1 PCT ad hoc to that particular case. However, the office in question is not obliged to accept this (this only becomes an obligation where the office has informed the IB). Not applicable to the priority period Euro-PCT Guide 68 The excusing of a delay according to R82 PCT does not apply to the priority period. V.1.3.3.2. War, revolution, natural disaster etc R82quater.1(a) PCT Any interested party may offer evidence that a time limit fixed in the PCT Rules for performing an action before: - the RO - the ISA - the SISA - the IPEA, or - the IB was not met due to any of the following occurring in the locality of his place of residence, place of business or where he is staying: - war - strike - revolution - civil disorder - natural calamity, or - other like reason. Omitted act completed as soon as possible R82quater.1(a) PCT The omitted act must be taken as soon as reasonably possible. PCT-AG I, 11.065A Generally how soon the omitted must be completed depends on the circumstances. In the case of a strike where the agent could not reach his office, the act can be completed on the next working day or shortly afterwards. However, where a disaster results in the agent losing all of his files, it will take longer for the act to be completed. 2015 - Peter Watchorn & Andrea Veronese 435
Evidence: place & time limit for filing R82quater.1(a) PCT Evidence of the above is required. R82quater.1(b) PCT This evidence must be provided to the office in question [RO, ISA, SISA, IPEA or IB]. - The evidence must be provided not later than 6m after expiry of the time limit in question. Note that this is more generous than completion of the omitted act, which must be completed as soon as possible. Consequently, it would seem that the applicant must complete the omitted act quickly, but can provide evidence of the force majeure (war etc) later, but not after 6m from expiry the missed time limit. PCT-AG I, 11.065A The request for the excusing of the delay and the relevant evidence must be submitted to the competent Office as soon as reasonably possible and no later than 6m after expiry of the time limit in question. However, there does not appear to be any requirement in R82quater.1 PCT that the evidence be provided any earlier than 6m after expiry of the missed time limit. Examples OJ 2012, 618 Problems associated with Hurricane Sandy on the east coast of the US [which made landfall there on 29.10.2012] were also a potential reason for excusing missed time limits before the EPO as a PCT authority under R82quater PCT. OJ 2013, 372 Problems associated with the Oklahoma tornado [20.05.2013] were also a potential reason for excusing missed time limits before the EPO as a PCT authority under R82quater PCT. OJ 2015, A61 Problems associated with the closure of Greek banks from 28.06.2015 were also a potential reason for excusing missed time limits before the EPO as a PCT authority under R82quater PCT. OJ 2015, A62 Problems associated with the disruption caused by a postal strike affecting Deutsche Post and DHL in Germany from April to July 2015 were also a potential reason for excusing missed time limits before the EPO as a PCT authority under R82quater PCT. Corresponding EPC provisions According to R134(5) EPC a similar system operates to mitigate late submissions or payments due to postal disruption in the EPC [the problems associated with Hurricane Sandy, were also applied for the processing of European applications according to R134(5) EPC]. However, under the R134(5) EPC this relates directly to the postal service being disrupted [as was also the case with R82.2 PCT in force before 01.07.2012]. However, under new R82quater PCT, in order to excuse a missed time limit, the effects of the war, natural disaster etc do not need to be limited to disruption of the postal system, but extend to all effects of such events in delaying compliance with a time limit. For example new R82quater PCT allowed the excuse of a missed time limit where Hurricane Sandy e.g. destroyed the agent's records, but where postal services were unaffected. Communication of the request & decision A.I. 111 The RO/ISA/SISA/IPEA will promptly transmit: (i) to the party in question - the decision on whether to allow the request, and, (ii) to the IB - the request itself, any evidence provided and the decision on whether to allow the request. Periods not excused cf R82quater PCT PCT-AG I, 11.065 The excusing of a delay according to R82quater PCT does not apply to periods not set in the Rules. In particular it does not apply to the following periods: - the priority period (Art.4C PC) - Art.22 PCT - Art.39 PCT RO-GL 30 This Guideline confirms that missing the priority period is not excusable according to R82quater PCT. The above is also confirmed by Euro- PCT Guide 68. - However, where the priority period is missed, this Guideline also points out that restoration of the priority is possible [under R26bis.3 PCT]. For details of this procedure see I.8.7. If the priority period is missed for a reason such as a natural disaster etc as indicated above, and the applicant can prove this, it is very likely that the more stringent due care requirement under R26bis.3(a) PCT would be met for such a request. National/regional processing has started R82quater.1(c) PCT The excuse of a delay need not be taken into account by any designated or elected Office before which the applicant, 436 2015 - Peter Watchorn & Andrea Veronese
V.2. V.2.1. Art.27(7) PCT at the time the decision to excuse the delay is taken, has already performed the acts referred to in Art.22 PCT or Art.39 PCT. Representation Introduction: A representative (or agent) is a person who can perform legal acts in respect of an International application on behalf on the applicant. When an applicant is legally represented, any act of the representative is considered to be an act of the applicant who appointed him. Also, the PCT international authorities will correspond with the representative and send any communication to him. The applicant(s) may appoint an agent to represent him/them by filing a duly signed document (power of attorney, Request, Demand) according to the procedure laid down in the following sections. When there is more than one applicant, and no common agent has been appointed, one of the applicants can be appointed by all applicants as "common representative". If neither a common agent nor a common representative has been appointed (by all applicants), then one of the applicants will be deemed to be common representative [by default - see V.2.3]. Any act by the common representative is considered to be an act on behalf all applicants and the correspondence is sent to him. However, this is subject to the exception that an applicant who is deemed to be the common representative (by default), cannot file withdrawals (of the application, designations, elections, priority etc). Offices which can impose representation Under Art.27(7) PCT, the ROs and the designated offices may apply national law with respect to requirements that the applicant be represented by an agent having the right to act before that office [for certain applicants the EPO has such a requirement as designated office - Art.133(2) EPC - see IV.3]. Art.27(7) PCT is, however, not applicable to the ISA or the IPEA. Thus, these offices may not impose such representation requirements. Mandatory representation before the Receiving Office The ROs may apply national law with respect to requirements that the applicant be represented by an agent having the right to act before that office. Consequently this requirement varies depending on the RO concerned. For more information applicants should refer to the regulations published by the ROs where they intend to file an international application. IB as RO Once the applicant has the right to file an International application [see I.1], he can file at the IB (R19.1(a)(iii) PCT), which does not require the applicant to appoint an agent to act before it as RO. EPO as RO PCT applicant's Guide (see section dealing with the EPO as RO) The EPO acting as RO in the International phase requires the applicant to be represented by an agent only under certain circumstances. - an agent is required when the applicant has neither his residence nor principal place of business in an EPC contracting state* - in all other circumstances no agent is required. * Applicants filing an International application at EPO as RO are required to be represented in the same circumstances as for applicants in the European phase, as defined in Art.133(2) EPC [see V.2.8]. This only applies in cases where the national of an EPC state (who may file at the EPO as RO - R19.1(b) PCT) is resident and has his place of business outside the EPC states. PCT-AG I, 5.046 In cases where the applicant must be represented before the RO, it is highly advisable to appoint a representative (agent) before or on filing the application [e.g. by appointing the agent in the Request]. PCT-AG I, 5.046 The practice followed by ROs, when this requirement (if applicable) is not complied with, generally reflects that of national law. For the procedures at the EPO when a representative is required but not appointed in the European procedure, see IV.3. It is observed that, when filing a European application directly at the EPO (not via the PCT), even where an applicant is required to be represented, he may still perform any acts necessary for acquiring a filing date without acting through a representative (Art.133(2) EPC). Once a filing date is accorded, the applicant is requested to appoint a representative within a time limit (R58 EPC) and if he 2015 - Peter Watchorn & Andrea Veronese 437