Rule 90bis.1 provides an avenue for recourse if an applicant wishes to withdraw a filed international application in order to prevent publication.
Rule 90bis.1−Withdrawal of the International Application
When it is necessary to prevent publication, an applicant may refer to Rule 90bis.1. Under this rule, the applicant may withdraw the international application at any time prior to the expiration of 30 months from the priority date. Further, withdrawal shall be effective on receipt of a notice of withdrawal addressed by the applicant, at their option, to the International Bureau, to the Receiving Office or, where Article 39(1) applies, to the International Preliminary Examining Authority.
Finally, no international publication of the international application shall be affected 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.
When taking advantage of Rule 90bis.1, it is important to remember that World Intellectual Property Organization (WIPO) strongly recommends submission of the notice of withdrawal directly to the International Bureau before it completes the technical preparations for publication. According to WIPO, technical preparations are generally completed 15 days before the publication date (which is scheduled to take place as soon as possible after the expiration of 18 months from the priority date).
If the applicant wishes to submit the notice of withdrawal directly to the International Bureau it will be necessary for the applicant to utilize the ePCT system in order to submit the notice of withdrawal. Please note that if the applicant is not sure whether all signatures required to withdraw the international application are on file at the International Bureau it would be prudent for the applicant to submit a power of attorney along with the notice of withdrawal.
As indicated above, the applicant may also submit the notice of withdrawal to the appropriate Receiving Office which may offer the applicant other options. For an applicant utilizing RO/EP please note that the European Patent Office has provided the following ‘Real-file’ examples regarding withdrawal of an application in order to prevent publication:
- Conditional Withdrawal: In this scenario, an applicant requests withdrawal on condition that the application is not published; the notice of withdrawal is received at RO/EP at 15 months from the priority date; and, the notice of withdrawal is signed by all applicants.
- Short Time Frames: In this scenario, an applicant requests withdrawal on condition that the application is not published; the notice of withdrawal is received at RO/EP 15 days prior to the date scheduled for international publication; and, the notice of withdrawal is signed by all applicants.
- Non-Payment of Fees: In this scenario, an applicant announces that the international search fee will not be paid and he thus requests that the processing of the application is discontinued; and, the notice is signed by the single applicant.
- Deemed Common Representative: In this scenario, a notice of withdrawal signed by deemed common representative is submitted.