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.
Changing access rights in ePCT when there is a change of agent
Q: I am the agent of record for an international application, and have been informed by the applicant that a new agent will be taking over representation of the application. The new agent will be submitting a request under PCT Rule 92bis for the recording of a change of agent, together with a power of attorney signed by the applicant in favor of the new agent. I currently have access rights to the international application via ePCT. Please could you tell me what I should do with those eOwnership rights? Can I assign the ePCT access rights to the new agent?
A: When recording changes under PCT Rule 92bis in respect of international applications to which applicants or agents have online access rights via ePCT, the recommended procedure is for one of the persons with “eOwner” access rights to the international application to modify, prior to the submission of the PCT Rule 92bis request, the ePCT access rights in the ePCT system in accordance with the transmittal of the request for change. For instance, in the case of a change of agent, the outgoing agent who has eOwner access rights in ePCT can already assign access rights to the new agent in the ePCT system, provided that the new agent has created an ePCT account, authenticated it with a digital certificate and concluded an eHandshake with the original agent. For further information on these procedures, please see the “ePCT User Guide” which is available at:
Note, however, that as soon as any request for recording a change under PCT Rule 92bis has been received in the internal processing system of the International Bureau (IB), whether it has been sent via the ePCT system (https://pct.wipo.int/ePCT), via the PCT Document Upload Service (https://www.wipo.int/pct/en/service_center/) (which will, as of 1 July 2012, move under the ePCT umbrella), or on paper or by fax, all online access in ePCT to that international application, including to anyone who already had ePCT access rights, is automatically suspended by the system until the PCT Rule 92bis change has been processed by the IB. This automatic suspension removes any potential problem which may arise, for example, where the appointment of an agent has been revoked by the applicant or his/her new agent, but that agent might still have online access rights to the international application via ePCT. Therefore, regardless of the nature of the change which has been requested under PCT Rule 92bis, even if the change does not concern a change of person, no external user will be able to access that application online via ePCT until such time as the request for change has been fully processed by the IB.
As part of the processing of PCT Rule 92bis changes, the IB will, in any case, check whether ePCT access rights need to be modified. For example, if the appointment of an agent is revoked or renounced, and that agent had access rights to the international application in ePCT, the IB will deactivate any corresponding access rights in ePCT, as necessary. Therefore, as the change, in your case, involves a revocation of your appointment, your ePCT rights will be automatically deactivated by the IB once the change of agent has been processed, whether or not you expressly remove your rights in ePCT. However, if you have already assigned your ePCT access rights to the new agent before the ePCT rights are suspended and the PCT Rule 92bis change is recorded, this would save the new agent from having to submit a new online eOwnership request via the ePCT system. The ePCT User Guide contains full details of how to assign eOwnership rights, including helpful screenshots.
Note that the IB does not have the authority in the ePCT system to set new access rights for any new person who previously did not have any access rights – the IB can only deactivate and/or reactivate existing access rights.
In the case where an agent renounces his/her appointment and is not in a position to modify the ePCT access rights because he/she does not know who will represent the applicant from that moment onwards, and in the absence of any other existing persons with eOwner access rights for the international application concerned, the ePCT rights in respect of that application concerned will be deactivated by IB.
For further information on the submission of requests for recording changes under PCT Rule 92bis, see the “Practical advice” published in PCT Newsletter Nos. 02/2012 and 03/2012, and the PCT Applicant’s Guide, International Phase, paragraphs 11.018 to 11.022.