(Ambiguous) Late Fee Change of Practice by IPONZ as PCT Receiving Office

On the 18th May 2023 IPONZ advised that with effect from 15th May 2023 it no longer charges a late fee when the required collective Transmittal, International Filing and International Search fees for PCT International applications have not been paid or have inadequately been paid.

In accordance with Rules 14.1(c), 15.3 and 16.1(f) of the PCT Regulations the Transmittal, International Filing and International Search fees respectively are standardly allowed to be paid up to 1-month from the date of receipt of the international application by the PCT Receiving Office. However, Rule 16bis of the PCT Regulations provides that if those fees have not been paid or have inadequately been paid within that standard time period, then the Receiving Office is required to invite the applicant to pay the outstanding fees within one month of the date of invitation together with an optional late fee. If charged, the late fee is the higher of 50% of the outstanding fees or the Transmittal fee, but it cannot be higher than 50% of the International Filing fee (excluding fees for sheets in excess of 30).

The notification by IPONZ of its change in practice is somewhat ambiguous and may not comply with Rule 16bis of the PCT Regulations. Relevantly, IPONZ’s notification states:

Previously, whenever we received a new PCT application, we required its fees to be paid by a given deadline, or a late payment fee would be applied.
For new PCT applications from 15 May 2023:
• We will no longer charge late payment fees for these PCT applications.
• If the application fee is not paid by its given deadline, we will withdraw the PCT application after this deadline has lapsed.

It is not clear what is meant by ‘a given deadline’. Given that the late payment fee was applied if the required fees were not paid by the given deadline, then the most (if not the only) reasonable interpretation of this is that the given deadline is the standard deadline of 1-month from the date of receipt of the international application by the PCT Receiving Office in accordance with Rules 14.1(c), 15.3 and 16.1(f). That interpretation, though, is incompatible with Rule 16bis. While IPONZ has the option of not charging a late fee, it is still required to invite the applicant to pay the outstanding fees within one month of the date of invitation. Had IPONZ meant to state its new practice in a way that is compliant with Rule 16bis it should have said something to the effect of:

For new PCT applications from 15 May 2023:
• We will no longer charge late payment fees for these PCT applications.
• If the application fee is not paid by its given deadline, we will invite the applicant to pay the outstanding fees within one month of the date of invitation.
• If after this extra deadline has lapsed the required fees remain unpaid we will withdraw the PCT application.

Author: Quinn Miller

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