PCT Rule 90bis — Withdrawals (MPEP Coverage Index) – BlueIron IP
PCT Rule 90bis Withdrawals
Source: Patent Cooperation Treaty (PCT)BlueIron Update:
This page consolidates MPEP guidance interpreting PCT Rule 90bis, including 25 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
This section provides detailed guidance on the submission of a notice of withdrawal under PCT Rule 90bis, including its impact on power of attorney requirements and key obligations.
What this section covers
- Defines that this section addresses the submission of a notice of withdrawal and its impact on power of attorney requirements.
Key obligations
- Where an agent or common representative submits a notice of withdrawal, the requirement for a separate power of attorney is waived.
- An applicant must include filing information when claiming priority in the Request for International Patent Application at the time of filing.
Practice notes
- Ensure that all required information is included in the Request for International Patent Application when claiming priority.
- Be aware that submitting a notice of withdrawal waives the requirement for a separate power of attorney, but proper authorization should still be ensured.
Official MPEP § 90bis — Withdrawals
Source: USPTOLast Modified: 10/30/2024 08:50:22
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 90bis.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 90bis.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.
90 bis.3 bis Withdrawal of Supplementary Search Request
- (a) The applicant may withdraw a supplementary search request at any time prior to the date of transmittal to the applicant and to the International Bureau, under Rule 45bis.8(a) , of the supplementary international search report or the declaration that no such report will be established.
- (b) Withdrawal shall be effective on receipt, within the time limit under paragraph (a), of a notice addressed by the applicant, at his option, to the Authority specified for supplementary search or to the International Bureau, provided that, where the notice does not reach the Authority specified for supplementary search in sufficient time to prevent the transmittal of the report or declaration referred to in paragraph (a), the communication of that report or declaration under Article 20(1) , as applicable by virtue of Rule 45bis.8(b) , shall nevertheless be effected.
90 bis.4 Withdrawal of the Demand, or of Elections
- (a) The applicant may withdraw the demand or any or all elections at any time prior to the expiration of 30 months from the priority date.
- (b) Withdrawal shall be effective upon receipt of a notice addressed by the applicant to the International Bureau.
- (c) If the notice of withdrawal is submitted by the applicant to the International Preliminary Examining Authority, that Authority shall mark the date of receipt on the notice and transmit it promptly to the International Bureau. The notice shall be considered to have been submitted to the International Bureau on the date marked.
90 bis.5 Signature
Any notice of withdrawal referred to in Rules 90bis.1 to Rule 90bis.4 shall 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 not be entitled to sign such a notice on behalf of the other applicants.
90 bis.6 Effect of Withdrawal
- (a) Withdrawal under Rule 90bis 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 90bis.1 , the international processing of the international application shall be discontinued.
- (b-bis) Where a supplementary search request is withdrawn under Rule 90bis.3bis , the supplementary international search by the Authority concerned shall be discontinued.
- (c) Where the demand or all elections are withdrawn under Rule 90bis.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.
- Patent Term
- Pct
- Pct Amendments Article 19
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- Pct Description Claims
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- Pct International Preliminary Examination
- Pct Request
- Power Of Attorney
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- Documents Requiring Signature
| MPEP Section | Rules |
|---|---|
| MPEP § 1807 | |
| MPEP § 1828 | |
| MPEP § 1859 | |
| MPEP § 1880 |