WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.
Appointing agents before the International Searching and Preliminary Examining Authority
Q: The firm of European patent attorneys with which I work erroneously filed an international application, for which the only applicant was neither a resident nor a national of a member State of the European Patent Convention, with the European Patent Office (EPO) as receiving Office. The application was subsequently transmitted by the EPO to the International Bureau as receiving Office (RO/IB) under PCT Rule 19.4(a)(i). Is it possible for my firm to act as agent for the applicant before RO/IB, or will the applicant have to appoint an agent from his country of nationality or residence? If we cannot act as agent before RO/IB, can we be appointed as agent before the EPO in its capacity as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA), specifically for the purposes of international search and preliminary examination? (The EPO is a competent ISA and IPEA for this application.)
A: It is recalled that, under PCT Rule 83.1bis(a), in order to be able to represent the applicant before RO/IB, the agent must have the right to practice before the national (or regional) Office of, or acting for, a Contracting State of which the applicant is a resident or national. It is unlikely that your firm of patent attorneys would be entitled to represent the applicant unless there is somebody who is a patent attorney or patent agent registered before the Office concerned (see under the relevant receiving Office in the PCT Applicant’s Guide, Receiving Offices, Annex C) (www.wipo.int/pct/guide/en/index.html), and so if the applicant is going to appoint an agent, it must be one who fulfils that requirement.
You do, however, have the option of being appointed, under PCT Rule 90.1(b) and (c), as agent specifically for the purposes of search and examination before an ISA and IPEA. Any agent may be so appointed, irrespective of the receiving Office with which the application was filed and irrespective of any agent who is entitled to act for the application concerned under PCT Rule 90.1(a) for the entire international phase, provided that he/she has the right to practice before the national Office or intergovernmental organization which acts as ISA/IPEA (for information on who has the right to practice before a national or regional Office, see the relevant National Chapter (Summary) of the PCT Applicant’s Guide, or contact the Office concerned). In your case, since you have the right to practice before the EPO in its capacity as ISA and IPEA, the applicant could appoint you as agent specifically before the EPO.
In practice, it is not absolutely necessary to appoint an agent specifically for the purposes of international search since there is no dialogue with the ISA during the search procedure and an agent would not normally file any document directly with the ISA (amendments under PCT Article 19 are filed with the IB by the applicant or the agent entitled to act before the receiving Office). Such an agent would simply receive the international search report and the written opinion of the ISA. During the international preliminary examination procedure, however, the agent may need to respond to the written opinion of the IPEA or have a dialogue with the examiner. In the case where an additional person is appointed specifically for the procedure before the IPEA, all notifications issued by the IPEA will be addressed only to that additional person, and not to any agent appointed in general for the purposes of the international phase. Note, however, that such an agent would only be able to take action concerning the international preliminary examination procedure, and would not be entitled, for example, to withdraw the international application.
In order for you to be appointed in this way, a separate power of attorney would normally have to be submitted directly to the ISA and/or IPEA, as the case may be (see PCT Rule 90.4(b)). Note, however, that a power of attorney may not be required where the ISA/IPEA has waived the requirement to furnish a power of attorney (PCT Rule 90.4(d))–see the table entitled “Waivers: Powers of Attorney” at:
www.wipo.int/pct/en/texts/pdf/p_a_waivers.pdf
For further information on the particular instances in which a power of attorney is required by the EPO, see the Official Journal of the EPO, No. 5/2004, page 305, at:
www.european-patent-office.org/epo/pubs/oj004/05_04/05_3054a.pdf
Instead of submitting a power of attorney to appoint an agent before the IPEA, the appointment can also be made simply by way of the applicant signing the demand for international preliminary examination (Form PCT/IPEA/401) in which the agent is named in Box No. III as “agent specifically for the procedure before the IPEA”.