What filing date you get when you e-file at RO/IB?

What we are all accustomed to is that when we are picking a Receiving Office for the filing of a new PCT application, a substantial drawback of RO/IB is that we have to worry about the time zone.  For the US-based filer who is selecting between RO/US and RO/IB, the typical difference is six hours.  A filer in the Mountain Time Zone, for example, who is rushing to get a same-day filing date would need to e-file by 10PM if e-filing in RO/US but would typically need to e-file by 4PM if e-filing in RO/IB.

What I did not realize, until quite recently, is that things are quite different when one is e-filing a Hague application (in other words, an international design application rather than an international patent application).

The Administrative Instructions for the Application of the Hague Agreement, Section 204(c) (link to source document), say:

Where a communication is transmitted to the International Bureau by electronic means and, because of the time difference between the place from where the communication is sent and Geneva, the date on which the sending started is different from the date of receipt by the International Bureau of the complete communication, the earlier of the two dates shall be considered as the date of receipt by the International Bureau.

In plain language this means that for a US e-filer of a Hague Agreement application, the filer gets the benefit of local time.  Indeed the US e-filer gets the benefit of a better time than the time at the USPTO!  A filer who is located, for example, in the Mountain Time Zone could file at 11PM Mountain Time and get a same-day filing date if e-filing at the IB, while the result if e-filing at the USPTO would be a next-day filing date.

I certainly hope that PCT filers will join me in encouraging the RO/IB to adopt an approach like that of the Hague Agreement e-filing approach.  Please feel free to post a comment below.

7 thoughts on “What filing date you get when you e-file at RO/IB?

  1. The change you propose would implicate PCT Article 11, PCT Rule 20, and Administrative Instruction Section 704.
    (Article 11 Filing Date and Effects of the International Application)
    (Rule 20 International Filing Date)
    (Section 704 Receipt; International Filing Date; Signature; Physical Requirements)
    On review, I see no structural impediment to what you propose. Its a great idea, that I hope the IB will suggest to the assembly.
    I wonder how, in Hague, the sending location is determined, but that is a technical detail, not an impediment to similarly revising PCT. RICK

    • Dear Rick, this is not a technical detail, I am afraid.
      If you use the IP location for deciding on the local time, I have this VPN service I would like to sell you at a very, very special price (also great for viewing geo-restricted but otherwise legal and paid content). If you use the location of the applicant, one could use an applicant of convenience. If you use the location of the agent, well, I am changing my address to Hawaii!

      • Well of course you are not wrong that a filer can use a VPN to obtain whatever IP address they wish. To the extent that this is a problem, it is a problem right now for Hague Agreement filings. Keep in mind as well that there is a natural upper bound on the extent to which a filer can abuse this, namely at most the number of hours that separate Geneva from the International Date Line.

        Frankly I think of the IB as an extraterritorial place anyway. It’s part of the UN which is everywhere and nowhere, all at the same time. If a filer at the IB were to get the date that is just this side of the International Date Line I would not feel this to be inappropriate.

  2. Lou – You state “If you use the ‘IP location’ for deciding on the local time.” An IP address does not define a location; just a logical address. (I presume that) you mean if the IB uses the IP address for determining location of the sender, and then uses that location to determine local time of the sender. I consider determining “IP location” and time from “IP location” a technical detail. That could be one way to determine “the place from where the communication is sent and Geneva.” Another way would be to ask the sender to specify their location when filing the application.

    You state “If you use the location of the applicant.” The Hague administrative instruction specifies “the place from where the communication is sent;” not the location of the applicant.

    You state “If you use the location of the agent.” The Hague administrative instruction specifies “the place from where the communication is sent;” not the location of the agent.

    By the way, if you want a US address associated with the most favorable time zone for IP filing purposes, try Pago Pago instead of Hawaii. You get an additional hour. (But Internet service there seems a bit limited.) RICK

  3. I like the general idea but would prefer that each participating PCT member country pick a representative time zone e.g. in the US I would suggest that the relevant time zone as that of the USPTO. This would reduce confusion.
    A second consideration is that it would require a PCT rule change and therefore an opportunity for PCT member countries to take reservations i.e. opting out of accepting the earlier date allowed by the new rule. This would lead to some offices accepting the earlier date while other offices would not. Over time most, if not all, countries will most likely remove their reservations making the new rule universally accepted by PCT member states.
    Another advantage of such a rule change would to give countries west of Geneva’s time zone (CET) a similar benefit as those countries east of CET when filing at the RO/IB.

  4. Am I the only one who sees ambiguity in the “plain language” here? Although the Hague AI vaguely refers to time zones where it helpfully offers a reason for the AI (“because of the time difference…”), the rule that it actually states (“Where … the date on which the sending started is different from the date of receipt by the International Bureau of the complete communication, the earlier of the two dates shall be considered as the date of receipt by the International Bureau”) does not refer to time zones specifically but seems to place emphasis on the date that a transmission is initiated vs the date that a transmission is completed, i.e., suggesting that the AI is only intended to cover the rare situation in which a transmission straddles midnight (in Geneva?). It would be nice, as you infer, if we can get from this AI the added bonus that the Hague filer is always entitled to the later of his/her time zone or Geneva’s time zone, but without added clarification from WIPO I am less than reassured.

  5. Oops. I meant to say:
    … It would be nice, as you infer, if we can get from this AI the added bonus that the Hague filer is always entitled to the ***earlier*** of his/her time zone or Geneva’s time zone, but without added clarification from WIPO I am less than reassured.
    –Gerry

Leave a comment

Your email address will not be published. Required fields are marked *

This site uses Akismet to reduce spam. Learn how your comment data is processed.