PCT Newsletter 04/2014: 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.

Entitlement to file with a particular receiving Office; indicating applicants for specific designations: the example of filing with the European Patent Office

Q: I am a patent agent based in Germany, and am going to file an international application for the first time. The application will be filed on behalf of two applicants: one is a resident and national of Germany (DE), and the other is a resident and national of the United States of America (US).

(1) May I file the international application with the European Patent Office (EPO)?

(2) If so, may the applicant who is a resident and national of DE be applicant for the designation for a European patent, and may the applicant who is a resident and national of US be indicated as applicant for all other PCT Contracting States?

A: (1) Any resident or national of a PCT Contracting State (be it a natural or a legal person) may file an international application (PCT Article 9), and if there are two or more applicants, the right to file exists if at least one of them is entitled to file an international application (PCT Rule 18.3).

It is the residence and/or nationality of the applicant on the international filing date which determines whether a receiving Office is competent to receive a particular international application: according to PCT Rule 19.1, the international application may be filed, at the option of the applicant, with the national Office of or acting for1 the Contracting State of which the applicant is a resident and/or national, or with the International Bureau (RO/IB). If there are two or more applicants, in order to file with a particular receiving Office, it is sufficient that one of them meets the nationality and/or residence criterion for the Office concerned (PCT Rule 19.2). If this requirement is not complied with by any of the applicants, the receiving Office will not accept the application, and the international application will be transmitted to the receiving Office of the International Bureau (RO/IB) for further processing under PCT Rule 19.4, unless prescriptions concerning national security prevent the international application from being transmitted to the IB2.

Therefore, in the case in question, provided that there is an applicant who is a resident and/or national of one of the Contracting States of the European Patent Convention (EPC) (Germany in your case), the international application may be filed with EPO as receiving Office (RO/EP), although you would also have the option of filing with:

– the receiving Office of the State in respect of which the applicant is a resident or national (the German Patent and Trade Mark Office); or

– the RO/IB.

On the basis of the US residence and nationality of one of your applicants, there would also be a fourth option of filing with the United States Patent and Trademark Office (USPTO) as receiving Office, although you would not be able to represent the applicants before the USPTO unless you were registered to practice before that Office.
As the European Patent Organisation currently has 38 member States, nationals and/or residents of all those States may also file international applications with RO/EP.  The list of States concerned can be seen at:

http://www.epo.org/about-us/organisation/member-states.html

Note that some of the EPC member States have dependent territories in which the PCT and the EPC may be applicable; applicants from those territories may therefore also be entitled to file a PCT application with RO/EP – a list of those territories has just been published in the March 2014 issue of the Official Journal of the EPO at:

http://www.epo.org/law-practice/legal-texts/official-journal/2014/03/a33.html

The list published at the above web page concerns only the dependent territories of EPC member States – note that there are other PCT Contracting States which are not member States of the EPC which have dependent territories. For further information about a particular dependent territory, the patent Office of the State concerned should be consulted.

Further details regarding the filing of an application specifically with the EPO as receiving Office may be found in the “Euro-PCT Guide” at:

http://www.epo.org/applying/international/guide-for-applicants/html/e/ga_b.html

It is important to emphasize that, when determining the right to file an international application with a particular Office, an Office is not competent to act as receiving Office only on the basis of a person indicated as “inventor only” being a resident or national of a PCT Contracting State. It has come to the attention of the IB that the RO/EP has received a number of international applications where, although inventors were indicated as being from member States of the EPC, the applicants were neither residents nor nationals of such a State; therefore, in respect of those applications, there were no applicants entitled to file with the RO/EP. This has occurred more often since the entry into force, in September 2012, of the provisions of the America Invents Act which resulted in the removal of the requirement for the inventor to be indicated as an applicant in the request form (PCT/RO/101) for the purposes of the US designation. Applicants or their agents should therefore be extra vigilant to ensure that not only does the applicant have the right to file an international application, but also that the applicant has the right to file the international application with a particular receiving Office.

(2) When there are two or more applicants, any of them may be indicated as applicant for any of the designations, regardless of the applicant’s State of nationality or residence (see PCT Rule 4.5(d)). However, where a particular State has been designated for both a national patent and a regional patent, the same applicant or applicants must be indicated as applicant(s) for both designations of that State (Section 203 of the Administrative Instructions under the PCT). In your case, therefore, whichever applicant is indicated as applicant in respect of the designation for a European patent (whether it be the DE applicant or the US applicant) must also be indicated as applicant in respect of the national designation of all the States covered by the designation for a European patent. This is, of course, only relevant to member States of the EPC which, like Germany, have not closed their national route3.

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  1. Usually a regional Office, such as the EPO
  2. Such a transmission would not be prevented in the case of a filing with the EPO, which does not apply any prescriptions concerning national security.
  3. The following EPC member States have closed their national route: Belgium, Cyprus, France, Greece, Ireland, Italy, Latvia, Monaco, Malta, the Netherlands and Slovenia. Lithuania will close its national route as from 4 September 2014.