WIPO NOTIFIES COVID-19 AS FORCE MAJEURE EVENT, RELEASES PATENT COOPERATION TREATY (PCT) PRACTICE CHANGES

Recently, on 09 April 2020, the World Intellectual Property Organization (WIPO) has released a notification for Patent Cooperation Treaty (PCT) practice changes in light of the COVID-19 pandemic. The notification states that the Rule 82quarter.1 of the Regulations under the PCT which deals with the excuse of delay in meeting time limits due to reasons of force majeure would apply to the current scenario, as the International Bureau of the WIPO is of the view that current global pandemic should be considered to be a “natural calamity…..or other like reason” as provided in Rule 82quarter.1 of the Regulations.

Under the said rule, any interested party may offer evidence that a time limit fixed in the regulations was not met due to the force majeure events like war, revolution, civil disorder, strike, natural calamity etc. and that relevant action has been taken as soon as reasonably possible. The said rule requires strict evidentiary support and the evidence has to be found satisfactory by the authority for the said excuse to be granted. Through this notification, the International Bureau of WIPO has decided to waive of the requirement of the applicant providing evidence of the outbreak of the virus in its locality and has requested all authorities under the PCT, including in its role as Receiving Office (RO), to treat any request under the said Rule in a favourable manner thereby substantially lowering the threshold envisaged under the rule.

Also, International Bureau of WIPO has also decided to delay the issuance of PCT Form PCT/RO/117 until 31 May 2020 taking into consideration the limitation of Rule 82quater 1 in situations where an applicant has failed to adhere to the deadlines for filing an international application and a declaration to that effect has been made to the applicant in PCT/RO/117. Further more the WIPO has also recommended that, for at least one further month, which might be extended further, the Form PCT/RO/117 would be issued in relation to deadlines which have expired over two months previously i.e. deadlines expiring before 09 February 2020; and receiving offices waive charging of late fees under PCT Rule 16bis.2. By delaying the issuance of PCT/RO/117, the International Bureau of WIPO is providing an opportunity to all the applicants who have failed to adhere to the deadlines for filing an international application after 09 February 2020 by asking them to file a request under Rule 82quarter.1 without the strict evidentiary requirement as envisaged under the said rule.

In our view, this is a very welcome move by the International Bureau of WIPO keeping in mind the havoc created by the COVID-19 pandemic where offices across the world are shut and people are restrained from working from home. In this time of great distress for the world, the WIPO has given patent applicants and attorneys who has missed the deadlines stated in Regulations under the PCT some respite by releasing these much needed practice changes.

Samik Mukherjee

B.Tech (IT); LL.B (hons. in IPR), Advocate; Regd. Patent Agent Samik, a registered Patent Agent and a practising advocate, is an active member of the Delhi operations of S Majumdar & Co. Besides handling litigations, he is also a part of the Patent prosecution and opposition team. His core areas of expertise include drafting and advising in contentious matters, providing an opinion on patentability and non-infringement, pre-grant and post-grant oppositions and revocations of engineering patents. He appears before various fora including the IPAB (Intellectual Property Appellate Board), Delhi High Court, District Courts and other Tribunals. He often participates as a speaker in IP awareness programs.

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