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.
The appointment of agents having the right to practice before an Authority specified for supplementary international search
Q: I am the agent in respect of an international application, and have appointed a sub-agent to act specifically for the purposes of the procedure before the International Searching Authority (ISA), and will be appointing that same agent to act specifically for the procedure before the International Preliminary Examining Authority (IPEA),which will be the same Office as the ISA. Because of the nature of the technology and the potential importance of the invention, I feel that the international application would benefit from a supplementary international search, and would therefore like to know whether the above-mentioned sub-agent can also act as agent for the purposes of the procedure before the Authority specified for supplementary international search?
A: Although it is not really necessary to appoint an agent specifically for the purpose of supplementary international search (SIS) (there would not normally be any dialogue between that Authority and an agent, and only a limited number of documents, if any, may need to be submitted to that Authority (for example, where required, a copy of any sequence listing in electronic form or a translation into a language accepted by the Authority which is to carry out the SIS)), you do have the option of appointing such a sub-agent, and may wish to, especially if you have already appointed such a sub-agent for the purposes of international search and preliminary examination.
Note, however, that according to PCT Rule 90.1(d)(ii), you may only appoint a sub-agent to act as agent specifically for the purposes of the procedure before the Authority specified for supplementary international search (SIS) if that sub-agent has the right to practice before the national Office or the intergovernmental organization (henceforth referred to as “Office”) which acts in that capacity. If this is the case, you will be able to widen the scope of the existing sub-agent’s appointment to cover the procedure before the Authority specified for SIS. To do this, you should mark the third check-box under Box No. III of the supplementary search request form (PCT/IB/375) and fill in that agent’s details in that Box.
If the existing sub-agent does not have the right to practice before the Office which acts as an Authority specified for SIS, you would be able to act as general agent for the purposes of the procedure before that Authority (as, unless otherwise specified by the applicant, you have the right to practice in respect of the whole of the international procedure), since, according to PCT Rule 90.1, a person having the right to practice before the Office with which the international application is filed (or, where the international application is filed with the International Bureau (IB), having the right to practice in respect of the international application before the IB (see PCT Rule 83.1bis)), may be appointed by the applicant as his agent to represent him before the receiving Office, the IB, the International Searching Authority, any Authority specified for SIS and the International Preliminary Examining Authority. In this situation, you would mark the first check-box under Box No. III of the supplementary search request and fill in the necessary parts of that Box.
If you wish, you also have the option of appointing a further sub-agent who has the right to practice before the Office or organization which acts as the Authority specified for SIS (PCT Rule 90.1(d)(ii)), in which case you should mark the third check-box under Box No. III of the supplementary search request and provide the necessary details of that new agent. Since you, as appointed agent of the international application, would be appointing the sub-agent, the signature of the applicant would not be required. Note that the sub-agent would only be able to take action concerning the SIS procedure, and would not be entitled to take action on any other matters.
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 (https://www.wipo.int/pct/guide/en/index.html) or contact the Office concerned; for further information on the appointment of sub-agents, see PCT Applicant’s Guide, International Phase, paragraphs 81 and 413; and for further information on the new SIS service, see PCT Rule 45bis and PCT Newsletter No. 12/2008, pages 1-3 and 14-15.