WIPO Journal - World Intellectual Property Organization

“Bending” of PCT articles in the Regulations
Flexibility in the system has over the years been added to the PCT by amending the Regulations under
the PCT. In this manner, the rigidity of certain PCT articles has been mitigated in the PCT Regulations.
At a number of occasions this has led to inconsistencies between the PCT articles and the PCT Regulations.
Some examples of such inconsistencies are given in the following paragraphs.
Designation fees
Filing date requirements under the Patent Cooperation Treaty 191
A first example of an inconsistency between a PCT article and the PCT Regulations is that it was desired
at a certain moment in time to abolish the designation fees and incorporate these into a new so-called
“international filing fee”. 78
PCT art.4(2) states (emphasis added):
“Every designation shall be subject to the payment of the prescribed fee within the prescribed time
limit.”
The word “prescribed” indicates that the “fee” and the “time limit” are to be found somewhere in the PCT
Regulations. Before the abolition of the designation fee, it was “prescribed” in PCT r.15.2 that the
“international fee” consists of two parts: the “basic fee” and the “designation fee”. The time-limit for
payment of the designation fee was prescribed in PCT r.15.4. After the accordance of the international
filing date, the receiving office checks, among other things, whether the fees have been paid (PCT art.14).
In PCT art.14(3)(a) the receiving office checks whether within the prescribed time-limit “no fee prescribed
under Article 4(2) has been paid in respect of any of the designated States”. In PCT art.14(3)(b) the
receiving office checks whether “the fee prescribed under Article 4(2) has been paid in respect of one or
more (but less than all) designated States within the prescribed time limit”. The various consequences of
non-compliance are indicated in the respective paragraphs of the articles.
What happened to the payment of designation fees was abolished? 79 Well, there is no longer any
“prescribed” fee and there is no longer any “prescribed” time-limit for the designation fee(s) in the PCT
Regulations. 80 The two instances of the word “prescribed” in PCT art.4(2) are preserved without reference
in the Regulations. No sentence was added somewhere in amended PCT r.15 about the international filing
fee, such as:
“By paying the international filing fee within the time limit of Rule 15.4, the applicant is deemed to
have paid the fee prescribed in Article 4(2) within the time limit prescribed in Article 4(2).” 81
It can be concluded that PCT art.4(2) has become a “lame duck”.
What happened with the references in PCT art.14(3) with respect to the “fee prescribed under Article
4(2)”? As the designation fee was linked to the international filing fee, the wording “fee prescribed under
Article 4(2)” was given the following interpretation in PCT r.27.1(b):
“For the purposes of Article 14(3)(a) and (b), ‘the fee prescribed under Article 4(2)’ means the
international filing fee (Rule 15.1) and, where required, the late payment fee (Rule 16bis.2).”
78
“The Concept and Operation of the Designation System” (prepared by the International Bureau), Working Group on Reform of the PCT, Document
PCT/R/WG/1/1 (September 2001), Item 59, at http://www.wipo.int/meetings/en/details.jsp?meeting_id=4554 [Accessed March 29, 2011].
79
The Regulations under the PCT as amended, effective January 1, 2004.
80
There is no reference in the PCT Applicant’s Guide — International Phase, 2011, to PCT art.4(2). In addition, there is no mention of the “designation
fee”.
81
The original proposal of the International Bureau for the reformulation of PCT r.15.1, as contained in the Annex of PCT/R/WG/1/1, in relation
to the “international filing fee” contained a sentence: “That fee includes the fee referred to in Article 4(2).” However, this sentence was abolished in
later versions of PCT r.15.1.
(2011) 2 W.I.P.O.J., Issue 2 © 2011 Thomson Reuters (Professional) UK Limited