PCT Newsletter 01/2013: 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.

Requesting the recording of a change in respect of multiple international applications using ePCT

Q: I am an agent in respect of a number of international applications which were filed after 16 September 2012. I inadvertently used the out-of-date July 2012 version of the request form, and, as I was unaware of the changes to the U.S. national law which entered into force on 16 September 2012, I indicated the inventors as applicants for the designation of the United States of America (US) and the corporate applicant as applicant for all designated States except US. I received notices from the receiving Office (PCT/RO/132) drawing my attention to the fact that it is no longer necessary in all cases to indicate the inventor(s) as applicant(s) for the purposes of the US designation. In respect of all of those international applications, I would now like to change the status of the applicant/inventors for the purposes of the US designation to inventor only, and to change the status of the corporate applicant to applicant only for the purposes of all designated States. Please could you tell me whether I can make such a request for multiple international applications using ePCT, and if so, how?

A: First of all, you should only request the recording of those changes if the rights to those international applications (IAs) have already been transferred from the inventors to the corporate applicant. Even though the International Bureau (IB), in those cases, would not require any proof or evidence about such a transfer, you need to keep in mind that designated Offices are entitled to ask you to furnish relevant proof or evidence in the national phase.

You can make a request for change under PCT Rule 92bis in respect of multiple IAs using ePCT. Note that, since it is possible to use ePCT public services to make such a request, it is not necessary to have access rights to any of those IAs in ePCT private services. In order to do this, you can prepare a letter, as you would do if you were submitting such a request by mail or by fax, in which you describe the requested change and list all the IA numbers to which the change should apply. You can then use the “Upload Documents” function of ePCT to submit the request. To do this, the request can be submitted in respect of only one of the applications on the list of IA numbers concerned by the requested change. You should select the document type “Request for Change under Rule 92bis (for multiple IAs)” and upload a PDF version of the letter making the request, including the list of all the IA numbers that are also affected by the change. The processing team at the IB will then make an electronic copy of the multiple request for the recording of a change under PCT Rule 92bis for each of the IAs concerned.

If you have access to ePCT private services for at least one of the IAs on the list, requesting a change under PCT Rule 92bis is one of a variety of online actions that can be taken directly on the file of an IA by using the “Actions” tab. Although this would allow you to fill in a simple web form online that is tailored to the action selected, and would eliminate the need to prepare separate correspondence and convert it into PDF for upload, note that you would have to do a separate action in respect of each IA number concerned – it is not currently possible in ePCT private services to submit one such request in respect of multiple IAs, unlike the “multiple request” mentioned in the paragraph above. Whether or not this course of action is practical for you would depend on the number of IAs in respect of which the change is to be made; if you have a long list of IAs, the uploading of a single letter as described in the second paragraph of this answer would take you much less time.

Any applicants wishing to request such changes by fax or by mail should note that, although the IB (including the IB as receiving Office (RO/IB)) accepts a single letter requesting a change which concerns multiple applications, not all receiving Offices may be prepared to accept a request in such a form. It is therefore recommended that you send such a request directly to the IB (or the RO/IB, if applicable) and not to any other receiving Office (unless you know that the Office concerned accepts such multiple requests). But in any case, it is generally recommended to submit any requests for changes under PCT Rule 92bis directly to the IB in order to avoid any additional delay in processing the request.

Note that the time limit for requesting such a change is 30 months from the priority date (PCT Rule 92bis.1(b)). Beyond this date, any changes would have to be made separately before each designated (or elected) Office upon entry into the national phase.

It is recalled that, also in accordance with the new requirements under U.S. national law, the wording of the declaration of inventorship for the purposes of the designation of the United States of America (PCT Rule 4.17(iv)) was amended with effect from 16 September 2012. If, together with any of the above-mentioned applications, you submitted such a declaration containing the wording that was applicable before 16 September 2012, you will have to resubmit a declaration containing the correct wording in respect of each IA concerned, either during the international phase or upon entry into the national phase. Note that if you have access rights to the IAs in question in ePCT private services, there is now an “Action” for preparing the new version of the declaration of inventorship by way of a convenient web form.

For further information on the consequences of the entry into force of the Leahy Smith America Invents Act on PCT applicants, see the cover pages of PCT Newsletters Nos. 07-08/2012 and 09/2012. For further information on how to use ePCT, see the User Guide and FAQs at: 

https://pct.wipo.int/LoginForms/epct.jsp