PCT NEWSLETTER

www.wipo.int/pct/en

June 2022 | No. 06/2022

 

Practical Advice

Avoiding submitting sensitive information during the international phase, where possible

Q:  I would like to submit a declaration of inventorship (under PCT Rule 4.17(iv)) for the United States Patent and Trademark Office (USPTO) as a designated (or elected) Office in respect of an international application that I am about to file.  Unfortunately, the inventor has been in an accident and is physically unable to sign the declaration.  I would therefore like to submit a medical certificate attesting that the inventor is unable to sign, but wondered whether it would be possible to ask for the certificate to be treated as confidential and not to be made available to the public as part of the file of the international application?

A:  If you submit a document containing sensitive information to the International Bureau (IB), such as a medical certificate, please be aware that generally, from the date of publication of the international application, the IB is required to provide public access to any document in the file of the international application concerned (PCT Rule 94.1(b)). 

Where a document is confidential and is not required during the international phase, it should therefore not be submitted.  As far as the particular declaration of inventorship is concerned, it is the USPTO as a designated Office that will ultimately decide whether a declaration is acceptable or not.  The IB is not in a position to verify whether in your particular case a medical certificate can replace the inventor’s signature. 

If you do not want the medical certificate to be publicly accessible, it is not recommended to submit it during the international phase.  We therefore advise you to submit the required declaration in the national phase directly to the USPTO, either signed or with an explanation as to why it could not be signed (and if necessary, together with the certificate in question), but relying on your competent US counsel to advise you on this matter in the US national phase.1

In this connection, please also note that, under the PCT, it is not possible during the international phase to submit information on inventors and at the same time request that such information remain confidential (that is distinct from some national and regional laws).  Any information relating to inventors submitted as part of the PCT procedure will generally be made publicly available.  

Only in exceptional situations under the conditions mentioned below would a document not be published or made publicly accessible.  Although there is a procedure for preventing public access to certain information, that procedure is intended to be for situations where applicants submit confidential information by accident, or where confidential information is required in the context of requests for restoration of the right of priority but should remain confidential (please refer to PCT Rules 48.2(l) and 94.1(e), and Rule 26bis.3(h-bis) where restoration of the right of priority is requested).  The standard is a strict one and applicants must submit a reasoned statement to explain why the following requirements would be met:

  • this 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 general, applicants should always carefully consider, before filing an international application or any related documents, whether the information in question contains any sensitive information and whether it is required during the international phase, and, should that be the case, whether it would then meet the above-mentioned requirements.  Where a confidential document is only required in the national phase, it is advisable to submit it directly to the relevant designated Office(s).

For further information about requests to omit sensitive information from public file access, please refer to the Practical Advice published in PCT Newsletter 07‑08/2016 at:

https://www.wipo.int/edocs/pctndocs/en/2016/pct_news_2016_7_8.pdf

1. Please note, however, that declarations under PCT Rule 4.17 may be submitted at any time prior to the expiration of 16 months from the priority date (or even later, provided that the declaration is received before the technical preparations for international publication have been completed), so if the applicant recovers and is in a position to sign the declaration during this period, it may still be possible to submit the declaration during the international phase.