PCT Newsletter 05/2012: 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 requirement to indicate the same person as applicant for a national designation as for the regional designation of that State

Q: I am the agent for an international application in respect of which I would like to indicate a particular applicant for the designation of Denmark (DK) for a national patent only. I am in the process of preparing to file the international application electronically using the PCT-SAFE software, however, while completing the PCT-SAFE version of the request form (PCT/RO/101), I noticed that, when selecting the designated States for which each person is applicant, the software will not allow me to enter the applicant for the designation of a DK national patent without it automatically indicating that person also as applicant for the designation of DK for a European patent (EP). There does not seem to be any way of deselecting the latter. Is it possible to indicate an applicant for the designation of DK for an EP patent who is different from the applicant for the DK national patent? If not, is it possible to have a different applicant for different parts of the European patent, for example, is it possible for one applicant to be applicant for all EP Contracting States except DK, and for another applicant to be applicant for the DK part of the European patent?

A: The PCT-SAFE software has been programmed to automatically complete the box such that the person who is applicant for a particular national designation is also named as applicant for the regional designation of that State because, in accordance with Section 203(b) of the Administrative Instructions under the PCT, where a particular State has been designated for both a national patent and a regional patent, the same applicant or applicants must be indicated for both designations. The automatic selection by the software avoids the situation where a correction to the request form is needed at a later date, which would be the case where a paper request form is filed and the applicant is indicated for the designation of a particular State for a national patent and not for a European patent.

As far as the rest of the EP designation is concerned, however, different applicants may be indicated for different States designated for a regional patent (see Section 203(a) of the Administrative Instructions). This means that the applicant in question can be indicated as applicant for the DK national and EP designations, and another applicant can be applicant for all EP Contracting States except DK. Also, however, because more than one applicant can be applicant for a particular designation, the other applicant could also be indicated as applicant for all EP Contracting States (including DK). You should therefore clarify the situation if you do not wish the other applicant(s) to be co-applicant(s) for the regional designation of DK.

For information on how to complete the request form (both the PCT-SAFE and paper versions) where there are applicants for particular designated States and the boxes provided do not fit the circumstances, see below:

(1) PCT-SAFE filings

After selecting “The person is applicant for ‘certain designated States only’” on the screen entitled “Details Concerning Applicant or Applicant/Inventor”, select the designated States for which the applicant is applicant on the “View/Change States” screen.

(2) Paper filings

In the relevant applicant’s box (either Box No. II or III), check the box marked “the States indicated in the Supplemental Box” and then repeat, next to part 1(ii) of the Supplemental box, the name of the applicant together with an indication of the designated State or States for which that person is applicant, for example:

SMITH, John, applicant for Denmark (national patent and European patent)