PCT Newsletter 06/2020: 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 practice before the International Bureau as receiving Office (when an international application is assigned to an applicant from a different country).

Q:  I filed an international application on behalf of an applicant (applicant A) with the International Bureau as receiving Office (RO/IB), as the applicant’s national receiving Office was closed for a long period due to the COVID‑19 pandemic.  Applicant A is a national and resident of country A, and I am registered to practice before the patent Office of country A.  The applicant now wishes to assign the international application to a new applicant (applicant B) who is a national and resident of country B.  I have the following questions about the right to represent applicant B given the new situation:

  1. Am I entitled to represent applicant B in respect of the application?
  2. Can applicant B appoint a new agent registered to practice before the patent Office of country A?
  3. Can applicant B appoint a new agent registered to practice before the patent Office of country B?

A:  Although there is no requirement for the applicant to be represented at the RO/IB, the applicant is always strongly advised to appoint an agent to act on his/her behalf.  Concerning an agent’s right to represent an applicant before RO/IB, according to PCT Rule 83.1bis, any person who has the right to practice before the national Office of, or acting for, a Contracting State of which the applicant (or if there are two or more applicants, any of the applicants) is a resident or national is entitled to practice in respect of the international application before the RO/IB under PCT Rule 19.1(a)(iii)1.  Furthermore, any person having the right to practice before RO/IB in respect of the international application is automatically entitled to practice in respect of that application before the IB in any other capacity, as well as before the competent International Searching Authority (ISA) and competent International Preliminary Examining Authority (IPEA).

For scenario 1, above, as you were entitled to represent the applicant at the time of filing the international application, as far as the RO/IB is concerned, you may continue to act as agent in respect of the international application before the RO/IB and the International Authorities, regardless of what happens regarding any future assignment of the application to another applicant.  Applicant B is therefore not obliged to appoint a new agent having the right to practice before the national Office of, or acting for, a Contracting State of which he/she is a resident or national, in other words, country B.

Note that, if you do continue to act as agent of record for the international application, it is not necessary to furnish a power of attorney in your favor signed by applicant B, provided that the request for the recording of a the change of applicant is requested by you (and not by applicant B).  This is because the RO/IB has waived the requirement to furnish the power of attorney under PCT Rule 90.4(d) and 90.5(c). 

For scenario 2, however, where applicant B wishes to appoint a new agent in country A, the situation is different, as he/she cannot appoint someone who is only entitled to practice before the Office in country A.  This is because, for any new appointment of agent, the appointed person must, in accordance with PCT Rule 83.1bis, have the right to practice before the national Office of, or acting for, a Contracting State of which the applicant B is a resident or national. 

As far as scenario 3 is concerned, therefore, where applicant B wishes to appoint a new agent registered to practice before the patent Office of country B, given the above‑mentioned requirement under PCT Rule 83.1bis, it follows that applicant B, who is resident in and a national of country B, can appoint a new agent who has the right to practice before the Office of country B.  That principle applies at any time during the international phase.

Please note that if applicant B appoints a new agent, a power of attorney would be required for the new agent to be recorded by RO/IB, due to the fact that the IB’s power of attorney waiver does not cover the situation where a new agent is appointed who was not indicated in the request form at the time of filing.

Note that the determination of right to practice before the RO/IB contrasts with the situation where an international application is filed with a national or regional Office as receiving Office.  If the application had been filed with the national Office of country A, applicant B would either have to retain you as agent, or appoint another agent who has the right to practice before that Office.  This is because, for filings with national (or regional) Offices, the agent must, in accordance with PCT Rule 90.1, have the right to practice before the Office with which the international application was filed.  Therefore, any new agent must be an agent who has the right to practice before the national/regional RO where the application was filed, irrespective of the nationality/residence of any new applicant.

For further information on filing PCT applications with the RO/IB, please refer to: 

www.wipo.int/pct/en/filing/filing.html

  1. Where the IB acts as receiving Office pursuant to PCT Rule 19.1(b) (that is, where the national (or regional) Office does not act as receiving Office but the IB acts as receiving Office on behalf of that State for its nationals or residents), any natural or legal person has the right to practice before it.