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1859    Withdrawal of International Application, Designations, or Priority Claims [R-08.2012]

PCT Rule  90 bis

Withdrawals

90 bis .1.  Withdrawal of the International Application

  • (a) The applicant may withdraw the international application at any time prior to the expiration of 30 months from the priority date.
  • (b) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
  • (c) No international publication of the international application shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.

90 bis .2.  Withdrawal of Designations

  • (a) The applicant may withdraw the designation of any designated State at any time prior to the expiration of 30 months from the priority date. Withdrawal of the designation of a State which has been elected shall entail withdrawal of the corresponding election under Rule 90 bis .4 .
  • (b) Where a State has been designated for the purpose of obtaining both a national patent and a regional patent, withdrawal of the designation of that State shall be taken to mean withdrawal of only the designation for the purpose of obtaining a national patent, except where otherwise indicated.
  • (c) Withdrawal of the designations of all designated States shall be treated as withdrawal of the international application under Rule 90 bis .1 .
  • (d) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
  • (e) No international publication of the designation shall be effected if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau before the technical preparations for international publication have been completed.

90 bis .3.  Withdrawal of Priority Claims

  • (a) The applicant may withdraw a priority claim, made in the international application under Article 8 (1), at any time prior to the expiration of 30 months from the priority date.
  • (b) Where the international application contains more than one priority claim, the applicant may exercise the right provided for in paragraph (a) in respect of one or more or all of the priority claims .
  • (c) Withdrawal shall be effective on receipt of a notice addressed by the applicant, at his option, to the International Bureau, to the receiving Office or, where Article 39 (1) applies, to the International Preliminary Examining Authority.
  • (d) Where the withdrawal of a priority claim causes a change in the priority date, any time limit which is computed from the original priority date and which has not already expired shall, subject to paragraph (e), be computed from the priority date resulting from that change.
  • (e) In the case of the time limit referred to in Article 21 (2)(a), the International Bureau may nevertheless proceed with the international publication on the basis of the said time limit as computed from the original priority date if the notice of withdrawal sent by the applicant or transmitted by the receiving Office or the International Preliminary Examining Authority reaches the International Bureau after the completion of the technical preparations for international publication.

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90 bis .5.  Signature

  • (a) Any notice of withdrawal referred to in Rules 90 bis .1 to 90 bis .4 shall, subject to paragraph (b), be signed by the applicant or, if there are two or more applicants, by all of them. An applicant who is considered to be the common representative under Rule 90.2(b) shall, subject to paragraph (b), not be entitled to sign such a notice on behalf of the other applicants.
  • (b) Where two or more applicants file an international application which designates a State whose national law requires that national applications be filed by the inventor and where an applicant for that designated State who is an inventor could not be found or reached after diligent effort, a notice of withdrawal referred to in Rules 90 bis .1 to 90 bis .4 need not be signed by that applicant (“the applicant concerned”) if it is signed by at least one applicant and
    • (i) a statement is furnished explaining, to the satisfaction of the receiving Office, the International Bureau, or the International Preliminary Examining Authority, as the case may be, the lack of signature of the applicant concerned, or
    • (ii) in the case of a notice of withdrawal referred to in Rule 90 bis .1 (b), 90 bis .2 (d), or 90 bis .3 (c), the applicant concerned did not sign the request but the requirements of Rule 4.15(b) were complied with, or
    • (iii) in the case of a notice of withdrawal referred to in Rule 90 bis .4 (b), the applicant concerned did not sign the demand but the requirements of Rule 53.8 (b) were complied with.

90 bis .6.  Effect of Withdrawal

  • (a) Withdrawal under Rule 90 bis of the international application, any designation, any priority claim, the demand or any election shall have no effect in any designated or elected Office where the processing or examination of the international application has already started under Article 23 (2) or Article 40 (2).
  • (b) Where the international application is withdrawn under Rule 90 bis .1 , the international processing of the international application shall be discontinued .
  • (c) Where the demand or all elections are withdrawn under Rule 90 bis .4 , the processing of the international application by the International Preliminary Examining Authority shall be discontinued.

90 bis .7.   Faculty Under Article 37 (4)(b)

  • (a) Any Contracting State whose national law provides for what is described in the second part of Article 37 (4)(b) shall notify the International Bureau in writing.
  • (b) The notification referred to in paragraph (a) shall be promptly published by the International Bureau in the Gazette, and shall have effect in respect of international applications filed more than one month after the date of such publication .

For a discussion of the withdrawal of the demand or of elections (PCT Rule 90 bis .4 ), see MPEP § 1880 .

Form PCT/IB/372 may be used by the applicant to make a withdrawal under any of PCT Rules 90 bis .1, 90 bis .2 , 90 bis .3 , and 90 bis. 4 . The form is available from WIPO’s web site ( www.wipo.int/pct/en/forms/ ).

The applicant may withdraw the international application, the designation of any state, or a priority claim by a notice addressed to the International Bureau or to the receiving Office and received before the expiration of 30 months from the priority date. Where Article 39(1) applies, the notice may also be addressed to the International Preliminary Examining Authority. Any such withdrawal is free of charge. A notice of withdrawal must be signed by all the applicants. The provisions for waiver of a power of attorney set forth in PCT Rules 90.4 (d) and 90.5 (c) do not apply in the case of withdrawals under PCT Rule 90 bis . An appointed agent or appointed common representative may sign such a notice on behalf of the applicant or applicants who appointed him, but an applicant who is considered to be the common representative may not sign such a notice on behalf of the other applicants. As to the case where an applicant inventor for the United States of America cannot be found or reached see PCT Rule 90bis .5(b).

The applicant may prevent international publication by withdrawing the international application, provided that the notice of withdrawal reaches the International Bureau before the completion of technical preparations for that publication. The notice of withdrawal may state that the withdrawal is to be effective only on the condition that international publication can still be prevented. In such a case the withdrawal is not effective if the condition on which it was made cannot be met that is, if the technical preparations for international publication have already been completed.

If all designations are withdrawn, the international application will be treated as withdrawn.

Where the withdrawal of a priority claim causes a change in the priority date of the international application, any time limit which is computed from the original priority date and which has not yet expired—for example, the time limit before which processing in the national phase cannot start—is computed from the priority date resulting from the change. (It is not possible to extend the time limit concerned if it has already expired when the priority claim is withdrawn.) Thus, international publication may be postponed by withdrawing the priority claim prior to publication. However, if the notice of withdrawal reaches the International Bureau after the completion of the technical preparations for international publication, the International Bureau may proceed with the international publication on the basis of the time limit for international publication as computed from the original priority date.

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Last Modified: 03/27/2014 10:10:33