Procedural Safeguards: Helpful Options When Things Go Wrong

• Author: Jay Erstling - Samson Helfgott - T. David Reed
• Pages: 111-131

111

CHAPTER 5

Procedural Safeguards:

Helpful Options When

Things Go Wrong

The vast majority of PCT applications will travel through the PCT pro-

cedures without incident. Occasionally, however, something will occur

at or after the time of filing that may jeopardize the application. To help

protect applicants when things go wrong, there are numerous proce-

dures available under the PCT to aid in getting applications back on

track for the remainder of the PCT process. In Chapter 2, under Section

9, “Fees under the PCT,” we discussed the procedures in place when

required fees are not paid at the time of filing. Chapter 2 also promised

an explanation of the safeguard in place to protect the applicant when

the PCT application (or the Demand) is filed with a noncompetent

office. Chapter 4 discussed stopping or postponing publication by with-

drawing the PCT application or the earliest priority claim. In addition

to a review of the procedures relating to payment of fees and stopping or

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112 The Practitioner’s Guide to the PCT

postponing publication, and a discussion of what happens when papers

are filed with a noncompetent authority, this chapter will discuss:

• Incorporation of priority-document matter by reference,

• Restoration of the right of priority following filing after the

priority year,

• Adding or correcting priority claims,

• Correcting obvious mistakes in the PCT application,

• Reinstatement of rights by the national offices, and

• Review of international phase events by the national offices.

1. Fee and Refund Safeguards

Anytime a fee is due in association with the filing of a document during

the international phase, applicants always have one month from the

date of filing to pay the fee without penalty. This procedure holds for the

initial filing of the application, requesting an optional supplementary

international search, and filing a demand for international preliminary

examination. Time limits are also applicable for payment of additional

search or examination fees (following a finding of lack of unity of inven-

tion by the ISA/IPEA). In those cases, however, the invitations to pay

additional fees will specify the time limit for paying.

If an applicant does not pay a fee within the one-month time limit,

the RO, IB, or IPEA will send a notice regarding the unpaid fees. The

notice will give the applicant a set period of time to pay the fee, but

following the mailing of the notice, the payment must be accompanied

by a late fee. The late fee is 50 percent of the delinquent payment. If

the applicant has not paid the filing fees in whole or in part, then the

late payment penalty is a minimum of the transmittal fee (currently

$240 in the RO/US) to a maximum of 50 percent of the international

filing fee (currently $709.50). In the case of late payment of the fees

associated with a demand for international preliminary examination,

the minimum late fee is equal to the Chapter II handling fee, and the

maximum is double the handling fee. The handling fee varies by the

currency accepted by the IPEA selected, but is the local equivalent of

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