PCT Newsletter 04/2005: 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.

The later filing of the declaration of inventorship (in particular where the Request Form is prepared using the PCT-SAFE software)

Q: Is it possible to file a declaration of inventorship separately from the Request Form, and if so, what is the time limit for submitting that declaration? Are there any particularities when the Request Form is prepared using the PCT-SAFE software?

A: It is recalled that, since March 2001, it has been possible, under PCT Rule 4.17 and Section 214 of the Administrative Instructions Under the PCT, for an applicant to file up to five different types of declarations at the time of filing the international application. This optional procedure offers a centralized means for applicants to comply with certain national requirements for entry into the national (or regional) phase either at the time of filing or early in the international phase. The applicant only needs to file one copy of a declaration which may be required by a number of national/regional Offices in the national phase.

The declaration of inventorship (PCT Rule 4.17(iv)) is used only for the purposes of the national phase in the United States of America. Although it may be more practical to submit this declaration together with the Request Form, you may wish to send the declaration later if, for example, you have not been able to obtain all the necessary signatures from the inventors, and you do not wish to delay the filing of the international application. PCT Rule 26ter allows you to submit the declaration later, whether the Request Form is filed entirely on paper, whether it is prepared using the PCT-EASY functionality of the PCT-SAFE software, or whether the entire international application is being filed electronically.

Any declaration submitted separately from the Request Form should be sent to the International Bureau (IB) before the completion of technical preparations for international publication (PCT Rule 26ter.1 provides that the time limit is 16 months from the priority date, provided that any such notice received by the IB after the expiration of that time limit will be considered to have been received on the last day of that time limit if it reaches the IB before the technical preparations for international publication have been completed). Any notice submitting the declaration under PCT Rule 26ter should consist of a separate sheet containing the declaration (for example, a copy of the relevant Box of the Request Form (Boxes Nos. VIII (i) to (v))), or the relevant printout from the PCT-SAFE software) and a letter explaining the addition of the declaration (see Section 216 of the Administrative Instructions). Upon receipt of the notice, the IB will inform you, as well as the receiving Office and the International Searching Authority, that the added declaration has been received.

Any declaration filed separately from the Request Form (whether prepared on paper or using the PCT-SAFE software) should include the international application number concerned. You should therefore wait until you have received the confirmation of receipt of your international application (Form PCT/RO/105 “Notification of the international application number and of the international filing date”) so that you can insert the international application number into the space provided for it in the declaration.

When using the PCT-SAFE software

If you are using the PCT-SAFE software, the declaration will prompt you to complete the international application number on-screen if you are completing the form after submission of the international application, and that number will then be included automatically in the printout of the declaration, which will read:

If the declaration is completed at the same time as the Request Form, the printout will include the above-mentioned phrase, as well as the following phrase:

If the declaration is completed at the same time as the Request Form but is submitted separately, you will therefore have to complete the international application number manually in the appropriate place on the printout, once you have received the international application number. Furthermore, the page count for the Request Form will be incorrect as it will include the declaration page(s) which are not actually being submitted with the Request Form, and those declaration page(s) may also be incorporated into the calculation of the fee per sheet in excess of 30.

In view of the above, when the declaration is to be filed separately, we suggest that you prepare it only after you have prepared and submitted the international application.

Other important points to note about filing a declaration of inventorship:

• If the name and address of an inventor is not written in the Latin alphabet, that information must be indicated in the Latin alphabet next to the non-Latin text.
• If an inventor has signed the Request Form itself, and the declaration is included therewith, the signature of that inventor is not required on the declaration.

For further information on the filing of declarations under PCT Rule 4.17, see the PCT Applicant’s Guide, Vol. I/A, paragraphs 102A to J and 250A to G, the Notes to Boxes Nos. VIII(i) to (v) of the Request Form, and the following issues of the PCT Newsletter:

No. 02/2001, page 8
No. 03/2001, page 5
No. 04/2001, cover page
No. 05/2001, cover page
No. 06/2001, page 3
No. 08/2001, page 2
No. 09/2001, page 2
No. 10/2002, page 6