PCT Newsletter 03/2008: 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.

Right to practice before an International Searching Authority and International Preliminary Examining Authority (where the agent is appointed for the whole of the international phase)

Q: I read in the “Practical Advice” in the February 2008 issue of the PCT Newsletter about a situation where a US agent was going to file, on behalf of an applicant who is a resident of the United States of America and a national of Mexico, an international application with the RO/IB. As a result of the applicant’s Mexican nationality, it was possible to choose the Spanish Patent and Trademark Office as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) (which has been specified as a competent ISA/IPEA by the Mexican Institute of Industrial Property in its capacity as receiving Office). Would the US agent have the right to practice before the Spanish Patent and Trademark Office in its capacity as ISA and IPEA?

A: If the US agent is being appointed for the whole of the international phase, he is also entitled to represent the applicant before the Spanish Patent and Trademark Office as ISA and IPEA (see PCT Rules 90.1(a) and 83.1bis(a) and (b)).

In principle, the question of who is entitled to represent the applicant(s) for a specific international application during the whole of the international phase is linked to the receiving Office with which the application was filed, and not to the Office which acts as ISA and/or IPEA. Each receiving Office determines who may practice before that Office. According to PCT Rule 90.1(a), a person having the right to practice before the national (or regional) Office with which the international application is filed may be appointed by the applicant as agent to represent him/her before the receiving Office (RO), the International Bureau (IB), the ISA and the IPEA.

As far as international applications filed with the IB as receiving Office (RO/IB) are concerned, any person who has the right to practice before the national (or regional) Office of, or acting for, a Contracting State of which the applicant is a resident or national may be appointed as agent in respect of the international application before RO/IB, the IB in any other capacity, and before the competent ISA and IPEA (see PCT Rule 83.1bis(b)).

Thus, in the case referred to in last month’s “Practical Advice” where the international application was to be filed with RO/IB, the applicant would have been able to appoint as agent any person who has the right to practice before the Mexican Institute of Industrial Property or the United States Patent and Trademark Office as receiving Office, and that person would automatically be entitled to act before the IB, the ISA and/or IPEA, whichever Authority is chosen.

Notwithstanding, it is possible to appoint a second agent to represent the applicant specifically before the ISA and/or IPEA, although in such a case, the right to practice would no longer be determined by the receiving Office, but rather, would be determined by the rules applicable in the national or regional Office acting as ISA or IPEA (see PCT Rule 90.1(b) and (c)). For information on the right to practice before national Offices, see the relevant National Chapter Summary of the PCT Applicant’s Guide (www.wipo.int/pct/guide/en/index.html). In case of uncertainty, the Authority in question should be contacted directly.

Further information on the appointment of agents specifically before the ISA and IPEA will be published in another “Practical Advice” soon.