World Intellectual Property Organization

PCT NEWSLETTER

www.wipo.int/pct/en

September 2014 | No. 09/2014

 

Practical Advice

Requests for recording of a new agent of record where the new agent makes the request (non-applicability of power of attorney waivers)

Q: I am the new agent for an international application and have sent a request to the International Bureau to record a change of agent under PCT Rule 92bis. The International Bureau has just informed me, however, that it cannot record the change without a power of attorney appointing me as agent, signed by the applicant. Please could you tell me why I need to obtain a power of attorney – I understood that the International Bureau had waived the requirement to furnish a power of attorney?

A: Even though the International Bureau (IB) has, in accordance with PCT Rule 90.4(d), waived the requirement for the agent to furnish a power of attorney where he or she has not already been appointed by the applicant (by the signing of the request form in which the agent is indicated as such), it may, in accordance with Section 433(b) of the Administrative Instructions under the PCT, nevertheless require a separate power of attorney in particular instances.

The IB has specified that a power of attorney is required “upon appointment of, or for any paper submitted by, an agent or a common representative who was not indicated in the request form at the time of filing”. Therefore, even though, at the time of filing, there was no need for a power of attorney to be submitted appointing the original agent of record, because you are a new agent, and were not included in the request form at the time of filing, you are required to obtain a power of attorney signed by the applicant, or by the deemed common representative (see PCT Rule 90.2(b)) where there are two or more applicants. The IB cannot record the change until it has received that power of attorney. Note that a number of other Offices which have waived the requirement for the agent to furnish a separate power of attorney and/or a copy of a general power of attorney, in their capacities as receiving Offices, International Searching Authorities, Authorities specified for supplementary search and/or International Preliminary Examining Authorities, have also specified similar instances in which a separate power of attorney and/or a copy of a general power of attorney is required.

In the case where the original agent has eOwner access rights to the application in ePCT, even if that person assigns access rights to you as the new agent1, this would not dispense with the need to submit a power of attorney in your favor signed by the applicant(s) in order for you to act on behalf of the applicant. For further information on assigning access rights to an application in ePCT, please see the “ePCT User Guide” at:

http://www.wipo.int/pct/en/service_center/pdf/pct_wipo_accounts_user_guide.pdf

and the “Practical Advice” entitled “Changing access rights in ePCT when there is a change of agent” published in PCT Newsletter No. 04/2012 at:

http://www.wipo.int/edocs/pctndocs/en/2012/pct_news_2012_04.pdf

Information about waivers by the IB and other Offices can be found in the table published at:

http://www.wipo.int/pct/en/texts/waivers.html

as well as in the relevant part of Annex C of the PCT Applicant’s Guide. For further information on the appointment of agents, see the PCT Applicant’s Guide, “Introduction to the International Phase”, paragraphs 5.041 to 5.051.

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  1. On the understanding that you had created an ePCT account, authenticated it with a digital certificate and concluded an eHandshake with that agent.

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