PCT Newsletter 07-08/2025: 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.
Indicating that the agent is entitled to represent the applicant before the International Bureau as a receiving Office
Q: As a US agent, can I file a PCT application with the International Bureau as a receiving Office (RO/IB) using ePCT, for a client who is a national and resident of Canada (with no co-applicant)?
A: PCT Rule 83.1bis(a) defines who is entitled to practice as an agent before the International Bureau (IB) as a receiving Office in respect of a PCT application. Specifically, it grants this right to any person who is entitled to practice before the national Office of, or acting for, a Contracting State of which the applicant (or at least one applicant if there are two or more) is a resident or a national. The question of who is entitled to practice before a specific national or regional Office is determined by each Office under PCT Rule 90.1. Since your client is a Canadian national and resident, you would need to be entitled to practice before the Canadian Patent Office to act as their agent.
When using ePCT to file a PCT application before RO/IB, ePCT validates whether the agent has the right to practice before the relevant Office and prompts the user to confirm this by checking a box which reads ‘The Agent is entitled to practice before the following Receiving Office’.
It is primarily the applicant’s responsibility to ensure that the agent is entitled to act before the receiving Office so when examining the application for formal defects, RO/IB would not usually check national registers for the registration of a specific agent, or the register of the European Patent Office, for example, as to whether an association of patent agents is registered as such before that Office. However, in exceptional cases where RO/IB has a doubt as to the agent’s right to practice before the national or regional office concerned, it will verify the information, possibly with the help of the national/regional Office before which the agent claims to be registered/entitled to practice.
Where RO/IB identifies that an agent does not have the right to represent an applicant under PCT Rule 83.1bis(a) —whether through its own review or following objections from a national office or a third party—it will correct ex officio the status of agent to “address for correspondence”.
Agents should keep in mind that even if the receiving Office does not identify the indication of agent as being incorrect, the indication might ultimately be questioned by designated Offices during the national phase. It is therefore important to ensure that the indication is correct at the time of filing.
If you do not have the right to represent the applicant as agent, you should either consider indicating yourself as an “address for correspondence” or suggest that your client appoint an agent who is entitled to act before the Canadian Patent Office. The "address for correspondence" designation will allow you to continue managing communications while ensuring PCT compliance.
For further information, please refer to the “Practical Advice” published in the following issues of the PCT Newsletter:
- Where an applicant can file a PCT application and who is entitled to act as agent:
PCT Newsletter No. 02/2024, at: https://www.wipo.int/web/pct-system/w/newsletters-practical-advice/pa_022024 - Entitlement to practice before the International Bureau as receiving Office (when an international application is assigned to an applicant from a different country):
PCT Newsletter No. 06/2020, at: https://www.wipo.int/web/pct-system/w/newsletters-practical-advice/pa_062020 - Filing and managing international applications in ePCT – in particular by a person who is not an authorized signatory:
PCT Newsletter No. 05/2017, at: https://www.wipo.int/web/pct-system/w/newsletters-practical-advice/pa_052017