PCT Newsletter 07-08/2016: Practical Advice

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.

Omission of certain information from public file access

Q:  I am the agent for an international application which was filed at the beginning of July 2016 and claims the priority of an earlier application filed at the end of July 2015.  The application has just been assigned to a new applicant, and, as I have also been appointed by that applicant, I will continue to act as agent for the application.  After the assignment took place, I immediately submitted a request for recording of a change of applicant under PCT Rule 92bis to the International Bureau (IB), in support of which I submitted the assignment document.  However, shortly afterwards, I realized that the assignment document contains confidential information, namely, information about the monetary value of the assignment transaction, which I had forgotten to take out of the document before submission.  Is it possible to remove this information from public access, and if so, how do I do this, and what time limits apply?

A:  Requests for recording changes under PCT Rule 92bis, as well as any documentary evidence, such as assignments, are normally available to the public as part of the file of the international application once the application has been published (see PCT Article 30(1)(a) and Rule 94.1(b)).  This means that the sensitive information that you refer to would be accessible to the public once the international application has been published (that is, at the end of January 2017). 

On 1 July 2016, amendments to PCT Rule 94 (“Access to Files”) entered into force in respect of international applications filed on or after that date.  The amendments enable applicants to request the omission from public file access of certain sensitive information contained in the file of the international application, provided that the necessary requirements have been met.  Similar amendments were also made to PCT Rule 48 to enable the applicant to request omission of certain information from publication (for example, if certain sensitive information, such as a person’s credit card number, were to appear in the description of the international application);  however, the provisions of PCT Rule 48 are not relevant to the case at hand since the assignment is a document which would not form part of the international publication of the international application.  Your case would, however, be covered by PCT Rule 94 as the assignment document would form part of the file of the international application.

Under new paragraph (e) of PCT Rule 94.1, upon receipt of a reasoned request by the applicant, the IB will not provide public access to any information contained in its file, if it finds that:

– the information does not obviously serve the purpose of informing the public about the international application;

– public access to such information would clearly prejudice the personal or economic interests of any person; and

– there is no prevailing public interest to have access to that information.

In order to make a request for omission, you need to submit to the IB:

– a reasoned request for omission, preferably by using Form PCT/IB/384;

– a replacement sheet or replacement sheets from which the relevant information has been removed; and

– an accompanying letter drawing attention to the differences between the replaced sheet(s) and the replacement sheet(s).

You should preferably send the request for omission of information to the IB through ePCT, but you can also send it by fax or by post.

Although there is no specific time limit for making a request for omission of information from public access, it is in your best interest to ensure that the request is received by the IB before completion of technical preparations for international publication – if the request for omission is received by the IB after completion of technical preparations for international publication, the IB may not be able to prevent the information from being made publicly available, at least for a certain amount of time. 

A request for omission of information from public file access can either be a spontaneous request made by the applicant, or it may follow a notification sent to the applicant by the IB, in which the IB invites the applicant to request omission of the information if it is in the applicant’s interest to do so, and if it would qualify for omission from public file access under PCT Rule 94.1(e) (see Form PCT/IB/383).  In the latter case, the IB invites the applicant to file such a request within one month from the date of mailing of the invitation, or prior to the completion of technical preparations for international publication, whichever time limit expires later (PCT Rule 94.1(e)).  You may, however, request omission of information from public file access at any time after the expiration of the above‑mentioned time limit, even if the information has already been made available to the public.  In this case, the IB would act as quickly as possible to remove such public access to the information (provided that the necessary requirements have been met). 

After examining your request for omission of information from public file access, the IB will decide whether or not the criteria under PCT Rule 94.1(e) have been satisfied and will take the following action:

– where the IB grants such a request, it will remove the information originally submitted from public access, and will promptly notify you of this using Form PCT/IB/385. Where that information is also contained in the file of the international application held by the receiving Office, the International Searching Authority (ISA), the Authority specified for supplementary search (SISA) and/or the International Preliminary Examining Authority (IPEA), the IB will also send a copy of that notification to each Office/Authority accordingly (PCT Rule 94.1(f)), so that those Offices are aware of your request to remove public access to such information, and will therefore not give access to such information either.  Furthermore, the information concerned will not be communicated to designated or elected Offices;

– where the IB decides not to omit the information from public file access, the IB will notify you by way of Form PCT/IB/386, giving the reason(s) for the decision. The information will be visible in the respective files of the Offices, and will be communicated to the designated or elected Offices. 

Please note that your request for omission of information from public file access, as well as the IB’s notification of their decision about whether to grant the omission (whether it is positive (Form PCT/IB/385) or negative (Form PCT/IB/386)), would not be visible to the public. 

As mentioned above, similar rule changes also entered into force on 1 July 2016 to enable applicants to request omission of information from international publication (see PCT Rule 48.2(l to n)).  In this case, a request for omission must be received by the IB prior to the completion of technical preparations for international publication.  The IB will decide whether or not the criteria under PCT Rule 48.2(l) have been satisfied.  Where the IB grants such a request, it will omit the information from international publication.  In addition, it will not provide public access to any such information, nor will it provide public access to any document contained in its file relating to the request.  Where the information is also contained in the file of the international application held by the ISA, the SISA and/or IPEA, it will notify each Office accordingly (PCT Rule 48.2(n)).

It is important to note that you should always carefully consider whatever documents you submit as evidence to the IB, for example, in the context of requests under PCT Rule 92bis or even requests for restoration of the right of priority under PCT Rule 26bis.3 sent to the IB as receiving Office, as all such documents would, by default, become part of the file of the international application and would be accessible to the public after international publication.  It may be possible to submit such documents in a “cleaned‑up” form in the first place, if the sensitive information is irrelevant in the context of the submission, in order to avoid the most sensitive information being published or made available to the public.  In any case, you should be aware that the applicable requirements under PCT Rules 48.2(l) and 94.1(e) would need to be met should you need to rely afterwards on these new provisions to avoid international publication of, or public access to, the information concerned.